Trade mark decision

BL Number
O/273/01
Decision date
4 May 2001
Appointed Person
Mr S Thorley QC
Mark
ROYAL MADE LIKE A GUN
Classes
12
Applicant
Eicher Limited - Royal Enfield Motor Units (No 2031741)
Opponent
David Matthew Scott Holder T/A Velocette Motorcycle Company
Opposition
Section 5(4)(a)

Result

Request to transfer proceedings to the High Court: Request refused.

Points Of Interest

  • 1. As detailed. See also Hearing Officer’s decision dated 2 July 2000 (BL O/051/00).
  • 2. See Appointed Person’s decision upholding the Hearing Officer dated 27 July 2000 (BL O/363/01).

Summary

Eicher Limited requested the transfer of these proceedings to the High Court because they considered a point of general legal importance was at issue, namely whether or not the original Enfield Cycle Company (EEC) had assigned the goodwill in the ROYAL ENFIELD trade marks to Enfield India (a predecessor in business) by virtue of passing off by Enfield India going unrestrained in the UK so that after ECC went into liquidation the goodwill continued in Enfield India.

The Appointed Person was referred to the guidance given in Wadlow’s (Christopher Wadlow, the Law of Passing Off) but he did not find this of assistance. In any event he considered this point of Law to be very rare and one not likely to arise in the future so he refused the request to transfer the proceedings to the Court.

Other matters raised by Eicher Limited related to use of the marks in suit in relation to spare parts provided by Mr Holder and whether any goodwill established, accrued to Enfield India. Also, whether carrying on business in the sale of spare parts gives any rights in any trade marks that are used. A further point was also raised as to the effect of manufacturing spare parts as distinct from merely selling them. The Appointed Person considered that all these matters would be decided on the particular circumstances of these proceedings and they did not assist Eicher Limited with their request.

Generally, the Appointed Person confirmed that the transfer of proceedings to the High Court should be rare and that full account should be taken of the views of the Registrar and the other party to the proceedings. Costs was also another obvious point to bear in mind.

Full decision O/273/01 PDF document27Kb