Trade mark decision

BL Number
Decision date
31 July 2003
Hearing Officer
Mr D Landau
25, 35, 39
Saga Leisure Limited
Cars Direct Group Limited
Sections 5(1), 5(2) & 5(4)(a)


Section 5(1): - Opposition failed.

Section 5(2): - Opposition failed.

Section 5(4)(a): - Opposition failed.

Points Of Interest


The two oppositions in these proceedings have been consolidated.

This is one of a set of three proceedings involving these parties which, while not consolidated, were dealt with at the same hearing. See BL O/216/03 (invalidation proceedings) and BL O/217/03 (opposition proceedings).

In the invalidation proceedings the Hearing Officer decided on the evidence before him that the opponents’ mark CAR DIRECT had not acquired a distinctive character at the date of application in 1995 nor at the date of the hearing on 22 July 2003. He went on to find that that mark was barred from registration in the prima facie by the requirements of Section 3(1)(b) and (c) of the Act. The Invalidation application was thus successful and the registered mark was deemed never to have been applied for.

In the opposition proceedings the Hearing Officer had essentially the same evidence before him and he decided that at the relevant date of 23 March 2000 the opponents’ application for the mark CARS DIRECT in a range of classes was not acceptable for registration and it was refused.

In these proceedings the Hearing Officer relied on his earlier decisions and concluded that as the opponents could not rely on their registration and earlier application their opposition on the Sections 5(1) and 5(2) grounds must fail.

Under Section 5(4)(a) – Passing Off – the Hearing Officer accepted that the evidence showed that the opponents enjoyed a goodwill in their mark CARS DIRECT in relation to the selling, usually by public auction, of ex-fleet cars on behalf of the owners. However, he considered the goodwill to be limited since the opponents did not focus on the relevant date or on the areas of trade encompassed within the applicants specifications and overall, he was not satisfied that the mark CARS DIRECT was not a distinctive mark. This latter point was particularly relevant when the Hearing Officer went on to compare the opponents mark CARS DIRECT with SAGA CAR DIRECT and SCD device SAGA CAR DIRECT. From his own knowledge and from the evidence before him, the Hearing Officer accepted that SAGA was a very strong house mark which was well known in the UK. In view of the descriptive nature of the opponents’ mark he did not believe that the respective marks were confusingly similar and went on to reject the opposition in its entirety.

Full decision O/218/03 PDF document94Kb