Trade mark decision

BL Number: O/012/05
Decision date: 8 November 2004
Appointed Person: Mr Richard Arnold QC
Mark: LE MANS
Classes: 06, 07, 09, 12
Applicant: Le Mans Autoparts Limited
Opponent: Autmobile Club de l’ouest de la France (A.C.O.)
Opposition: Sections 3(1)(b) & (c), 5(2)(a), 5(3) & 5(4)(a): Appeal to the Appointed Person.

Result

Section 3(1)(b) &(c): - Not considered. Section 5(2)(a): - Appeal allowed. Opposition successful. Section 5(3): - Appeal allowed. Not decided. Section 5(4)(a): - Appeal allowed. Opposition successful. Section 5(2)(a): - Appeal allowed. Opposition successful. Section 5(3): - Appeal allowed. Not decided. Section 5(4)(a): - Appeal allowed. Opposition successful.

Section 5(2)(a): - Appeal allowed. Opposition successful.

Section 5(3): - Appeal allowed. Not decided.

Section 5(4)(a): - Appeal allowed. Opposition successful.

Points Of Interest

1. See Hearing Officer’s decision dated 6 May 2004. (BL O/130/04)
2. The Appointed Person reviewed the interrelationship of the relevant provisions of the 1994 Act, the Directive, the Paris Convention and TRIPs in the context of "well known marks".

Summary

In his decision dated 6 May 2004 the Hearing Officer had found in favour of the applicant on all grounds of opposition. In his decision the Appointed Person considered only the relative grounds under Sections 5(2)(a), 5(3) and 5(4)(a).

As a first step the Appointed Person considered the correct title of the motor car race held at Le Mans. From the evidence he decided that in France it is usually 24 HEURES DU MANS whereas in the UK it is usually referred to as LE MANS and sometime LE MANS 24 HOURS.

In its grounds of opposition the opponent had claimed that LE MANS was a well known mark and this fact had not been fully considered by the Hearing Officer. As the Hearing Officer had criticised the opponent’s evidence the Appointed Person reviewed it carefully. While he accepted that it had some shortcomings as some documents were in French and not translated, and some were dated after the relevant date, he concluded that the Hearing Office had been over critical and that summaries relating to this evidence could be accepted.

As a first step in considering whether or not LE MANS was a well known mark the Appointed Person considered whether or not it was in fact a mark. After detailed consideration the Appointed Person decided that the name LE MANS is well known in relation to a motor car race and that it meets the criteria of being capable of distinguishing goods or services of one undertaking from those of other undertakings. There is no separate requirement that it be recognised by the public as a trade mark. In the present case the Appointed Person concluded that LE MANS did function as a trade mark for the services of organising and managing motor car racing events.

To determine the status of LE MANS as a well known mark the Appointed Person carefully considered the evidence filed and noted from reported cases the criteria to be applied in reaching his decision. The Appointed Person observed that the Hearing Officer accepted that LE MANS was well known and he concluded that the evidence indicated that LE MANS was well known not only in the specialist motor racing sector but among the general public at large. In particular he noted that LE MANS is the name of a famous race; has been used for many years; has been widely promoted by way of newspaper articles and television coverage and that it was significant that the mark LE MANS had been the subject of the grant of a number of licences.

In the light of his decision that LE MANS was a well known mark in relation to the organising and managing of motor racing events, the Appointed Person considered the ground of objection under Section 5(2)(a). He noted that the applicant intended to use the identical mark in relation to what could be described as accessories and parts for motor cars and he concluded that such goods had a degree of similarity to the services of the opponent whose reputation was also connected with motor cars. He concluded that the average consumer of the applicant’s goods might well think that they came from a source economically linked to the source of the opponent's services. The opponent thus succeeded in its opposition under Section 5(2)(a).

In view of his decision under Section 5(2)(a) in relation to similar goods and services; a similar finding applied to Section 5(3).

The Appointed Person went on to consider the ground under Section 5(4)(a) - Passing Off. Again he noted the reputation of the mark LE MANS and the fact that the services of the opponent were related activities to the goods of the applicant. In such circumstances there could well be misrepresentation. Opposition succeeded on this ground.

Full decision O/012/05 114Kb