Trade mark decision

BL Number
Decision date
11 January 2001
Hearing Officer
Mr M Knight
09, 16, 18, 21, 25, 28, 35
Flying Scotsman Railways Limited
The Director of Passenger Rail Franchising & Intercity East Coast Ltd
Sections 3(3)(b), 3(6), 5(2)(b), 5(3) & 5(4)(a)


Section 3(3)(b) - Opposition failed

Section 3(6) - Opposition failed

Section 5(2)(b) - Opposition failed

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • 1. None


As noted above this mark was applied for in a number of Classes. The following Classes were restricted:

Class 9 - Video tapes, films etc, all relating to the Flying Scotsman;

Class 16 - Printed matter, publications etc, all relating to the Flying; Scotsman

Class 35 - Advertising, promotions, posters, all to promote the activities of the Flying Scotsman

The opponents claimed that THE FLYING SCOTSMAN was famous as the name of a train service between London and Edinburgh and had been used to market that service since 1862. The mark is currently in use in relation to that service and the opponents claim there has also been use in relation to the provision of food and drink, whisky tumblers, T-shirts and badges. They have registrations of THE FLYING SCOTSMAN mark in Classes 39 (Transportation of passengers etc), Class 42 (Catering services) and Class 33 (Wines and spirits etc).

It would appear that THE FLYING SCOTSMAN locomotive engine which was in service between 1923 and 1963 was sold by the British Railways Board in 1963. The applicants acquired ownership in 1996 and claimed also to have acquired the business name THE FLYING SCOTSMAN at that time. They also claim that THE FLYING SCOTSMAN locomotive has been more widely written about, promoted and publicised than the service of the opponents.

Under Section 5(2)(b) the Hearing Officer accepted that the respective marks were very similar but concluded that it was inconceivable that the goods covered by the applicants would be considered similar to the services provided by the opponents. The Hearing Officer accepted that some of the goods or services covered by the applicants application could be used by the opponents in the provision of their services, but he thought that such use would be no more than an adjunct to the provision of the service, rather than a badge of origin. The opponents reputation in their mark did not change the Hearing Officer's view as to the possibility of confusion. Opposition failed on this ground.

With regard to Section 5(3) the Hearing Officer concluded that given his finding under Section 5(2)(b) the opponents did not have a strong case under this ground since the applicants currently owned THE FLYING SCOTSMAN locomotive and were merely seeking to exploit that name. The application was therefore not without due course nor would it take unfair advantage of the opponents mark. The opponents also failed under Section 5(4)(a).

Under Section 3(6) the opponents had filed copy correspondence between the parties which was said to make clear to the applicants, the opponents view that the applicants had no rights to the term FLYING SCOTSMAN as a business name. The Hearing Officer considered this to be insufficient for a finding of bad faith.

Full decision O/018/01 PDF document61Kb