Trade mark decision

BL Number
O/048/02
Decision date
4 February 2002
Hearing Officer
Mr M Reynolds
Mark
SPAMBUSTER
Classes
42
Applicant for Invalidity
Hormel Foods Corporation
Registered Proprietor
Antilles Landscapes Investments NV
Invalidity
Sections 47(2)(a) & 5(3)

Result

Sections 47(2)(a) & 5(3) - Invalidity action failed

Points Of Interest

  • 1. See High Court decision dated 24 January 2005 re further proceedings between these parties [2005] EWHC 13(Ch)

Summary

The applicants application was based on their ownership of a number of registrations for the mark SPAM (and variations thereof) in classes 25, 29 and 30 in respect of clothing and items of foodstuffs. The evidence filed in support of the application proved that they had a reputation in the mark SPAM in the UK in respect of tinned meats.

The registered proprietors mark is registered in Class 42 in respect of computer programming services so the Hearing Officer had little difficulty in deciding that in the context of Section 5(3) the applicants goods and the opponents services were dissimilar. He also noted that the applicants mark SPAM was not lost within the proprietors mark SPAMBUSTERS.

In addition to the fact that SPAM is known in respect of tinned meat (the applicants mark) the word SPAM is also used in relation to the Internet in the context of electronic junk mail. The applicants know of this usage but recognised that they cannot stop such use. However, they wish to stop the use SPAM in other trade marks as they feel that this will impact on the distinctive character and repute of their mark.

The Hearing Officer considered that the users of the proprietors’ services are likely to be aware of the context in which SPAM is being used in their mark and he did not consider that there would be any adverse consequences to the opponents mark in relation to their core product tinned meats. Invalidity action failed.

Full decision O/048/02 PDF document88Kb