Trade mark decision

BL Number
Decision date
18 January 2006
Hearing Officer
Mr A James
21, 29, 30, 32, 33, 35, 36, 37, 39, 42
The Covent Garden Market Authority
The New Covent Garden Soup Company Ltd
Sections 3(1)(a); 3(1)(b); 3(1)(c); 3(6); 5(2)(b) & 5(4)(a)


Section 3(6): - Opposition partially successful.

Section 3(1): - Opposition partially successful.

Section 5(2): - Opposition partially successful.

Section 5(4)(a): - Opposition partially successful.

Points Of Interest

  • 1. Bad faith; ownership of goodwill.
  • 2. Bad faith; bona fide intention to use.


The Hearing Officer dealt first with the allegations of bad faith under Section 3(6), which were:-

(i) The applicant did not own the goodwill in the marks applied for and

(ii) The applicant had no bona fide intention to use the mark on the goods or services specified.

The first ground failed; the applicant did not own the relevant goodwill but in the absence of any other credible claimant there was no reason why it could not apply for registration. The second ground failed for the most part, but succeeded in respect of some of the goods and services.

The Hearing Officer’s findings under Section 3(1) were that the mark was devoid of distinctive character in respect of the horticultural products and the remaining goods, but the attack on the services was rejected.

The attack under Section 5(2)(b) was directed against the goods and services already rejected by the earlier findings, but the Hearing Officer went on to consider the matter in case he should be found wrong. In this he found a likelihood of confusion in respect of some of the goods and services but not in respect of the remainder.

The Section 5(4)(a) objection did not advance the opponent’s success beyond that already achieved under the other Sections.

On balance the opponent had succeeded to a greater extent than the applicant and the Hearing Officer made an award of costs reflecting this

Full decision O/026/06 PDF document159Kb