Trade mark decision

BL Number: O/037/02
Decision date: 25 January 2002
Hearing Officer: Mr A James
Mark: DIANA PRINCESS OF WALES MEMORIAL FUND
Classes: 03, 04, 09, 12, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 32, 33, 34, 35, 38, 39, 41, 42
Applicants: The Estate of the late Diana, Princess of Wales
Opponents: Franklin Mint Company
Opposition: Sections 1(1); 3(1)(a); 3(1)(b); 3(1)(c); 3(1)(d); 3(3) & 3(6)

Result

Section 3(1)(a) - Opposition failed.

Section 3(1)(b) - Opposition failed.

Section 3(1)(c) - Opposition failed.

Section 3(1)(d) - Opposition failed.

Section 3(3) - Opposition failed.

Section 3(6) - Opposition failed.

Points Of Interest

1. Signature marks
2. Contary to Public Policy
3. Bad Faith

Summary

The oppositions to these applications were not consolidated, but were heard together.

First, the Hearing Officer dismissed the objection under Sections 1(1) & 3(1)(a), since the argument put forward appeared to relate to the applicants’ intentions regarding the use of the mark, rather than to any inherent characteristic in the mark.The Hearing Officer also dismissed the objection under Section 3(1)(d) since there was "no evidence of use in trade in the UK (other than by the applicants or with their consent) of any sign consisting exclusively of the Memorial Fund marks or the Signature mark."

The Hearing Officer also dismissed the objection under Section 3(1)(d) since there was "no evidence of use in trade in the UK (other than by the applicants or with their consent) of any sign consisting exclusively of the Memorial Fund marks or the Signature mark."

Under Sections 3(1)(b) and 3(1)(c) the Hearing Officer gave separate consideration to the marks. The Memorial Fund mark, in his view could function as a trade mark even though it contained some words which were a natural way to describe the goods or services concerned; it was "source specific". Neither was it open to objection under Section 3(1)(b) on the grounds that it was too commonplace; there was no evidence of the existence of any other such fund calling itself by that name.

The objections to the signature mark were that the word DIANA was synonymous with DIANA, PRINCESS OF WALES and the signature was insufficiently different from the word DIANA as to imbue the sign with any distinctive character. The Hearing Officer found that the signature mark was presented in a form which visually distinguished it from the visual means of designating commemorative goods or services of the kind in question; and he did not find that the aural similarity between the signature mark and the word DIANA was material. The mark was distinctive to the eye and that was sufficient to warrant protection.

In the light of those findings it was not necessary for him to consider the case for registration under the proviso to Section 3(1), but he remarked that the applicants would appear to have a good case under that provision.

The objections under Section 3(3)(a) also failed. The Hearing Officer rejected the submission that registration would prevent use of the name or likeness of the late Princess on memorabilia about her.

The case under Section 3(6) was that the mark would not be used as a trade mark but simply as an indication that the user had made a contribution to the Memorial Fund. This case failed also.

Full decision O/037/02 46Kb