Trade mark decision

BL Number
O/281/04
Decision date
3 September 2004
Hearing officer
Professor Ruth Annand
Mark
STASH
Classes
25, 28
Applicant
Stash Limited
Opponent
Samurai Sportswear Ltd
Opposition
Section 3(1), (b) & (c). Appeal to the Appointed Person.

Result

Section 3(1)(b), (c) & (d): - Appeal allowed. Opposition dismissed.

Points Of Interest

  • 1. None

Summary

As a preliminary point the Appointed Person dealt with the matter of evidence filed in reply which went beyond that allowed and which was raised by the applicant in its submissions. The Hearing Officer had dismissed the applicant’s objections because of their lateness but the Appointed Person was of the view that this dispute should have been dealt with at an interlocutory hearing before the decision was issued. In the circumstances she decided that the best way forward was to allow the applicant to file a response to this new evidence.

With regard to the Hearing Officer’s decision the Appointed Person noted that the Hearing Office had taken some account of survey evidence provided by the opponent even though it contained defects. She was of the view, having considered this evidence that it should have been dismissed in its entirety. Also close examination of the evidence obtained by the opponent from internet searches which purported to show that the word STASH was used descriptively, showed references between the applicant and opponent at a time when they were co-operating. Other references were somewhat ambiguous and the Appointed Person concluded that the opponent had failed to prove at the relevant date that STASH contravened Section 3(1)(d) as consisting exclusively of a sign or indication which had become customary in the current language or in trade practices for the goods concerned. Opposition dismissed on this ground.

As regards Section 3(1)(c) the Appointed Person noted that the applicant accepted that there had been some descriptive use amongst a small group of persons linked to the opponent and the applicant. However, there was no concrete evidence that the word STASH was likely to be required for use by other traders. A few random hits on the Internet of use by a few Rugby Clubs or rugby enthusiasts was insufficient to bar registration. Opposition on this ground failed as did the ground under Section 3(1)(b).

Full decision O/281/04 PDF document50Kb