Trade mark decision

BL Number: O/030/08
Decision date: 5 February 2008
Hearing Officer: Mr D Landau
Mark: THE OFFICIAL GUIDE TO INTERNATIONAL WOMEN'S MONTH
Classes: 16
Registered proprietor: Barbara M Campbell
Applicant for Invalidation: Sugar Media Ltd
Invalidation: Section 47 based on Sections 3(6) & 5(4)(a)

Result

Section 47 based on Section 3(6): Invalidation failed. Section 47 based on Section 5(4)(a): Invalidation failed.

Points Of Interest

The Hearing Officer decided that the logo in suit is a work that could be protected by copyright.

Summary

The two parties to these proceedings had been in competition with each other in the publishing field when a truce was called and a proposal was made to collaborate as regards the publishing of a magazine with the title of the mark in suit. Discussions involved a draft agreement but there is no confirmation that it was ever signed by the two parties even though at least one issue of the magazine was published by the proposed partnership.

The nub of this dispute involves disagreement about who designed the logo of the mark in suit and the fact that the registered proprietor applied for registration without, apparently, consulting the applicant for invalidation. One other fact came to light from the evidence and this was that the registered proprietor made clear on her application that she was merely applying for the design of the logo and not of the words of the mark in suit. This was overlooked by the Registrar at application stage and the Register does not carry an appropriately worded limitation. The Hearing Officer observed that this might impact on the registrability of the mark in suit but it was not a matter which was before him in these proceedings.

Under Section 5(4)(a) the Hearing Officer decided, in the absence of rebuttal evidence from the applicant, that he would accept the registered proprietor’s claims that she had been essentially responsible for designing the logo and he dismissed this ground of the invalidation.

As regards the Section 3(6) ground the Hearing Officer noted that he would have found in favour of the applicant if the application had been for the words of the mark in suit but as the application had only been for the logo, and he had accepted that the registered proprietor had designed the logo, then there could be no bad faith in making the application. This ground also dismissed.

Full decision O/030/08 102Kb