Trade mark decision

BL Number

O/151/03

Decision date

28 May 2003

Appointed Person

Professor Ruth Annand

Mark

EATALIA

Classes

29, 30

Applicant/Appellant

Luca Casalena

Opponent/Respondent

Paul Jonathan Bendit

Appeal against the decision of the Registrar’s Hearing Officer in Opposition Proceedings

Result

Appeal successful.

Points Of Interest

• 1. Goodwill not protectable if of trivial extent.

Summary

At first instance (see BL O/393/02) the Hearing Officer had dismissed the opposition under Section 3(6), but had found the opponent successful under Section 5(4)(a). The applicant appealed against this latter finding. Having reviewed the matter the Appointed Person confirmed that, whilst the smallness of the business does not prevent it having a goodwill, the law of passing off does not protect a goodwill of trivial extent. In her view the Hearing Officer had been wrong to find on the basis of the evidence before him that the opponent had established a protectable goodwill and reputation. She therefore did not need to consider if registration/use would be likely to mislead the public.

The appeal succeeded.

Full decision O/151/03 46Kb