Trade mark decision

BL Number
Decision date
13 March 1998
Hearing Officer
Mr M Reynolds
Tomy UK Limited
Andonis Violaris
Sections 3(1)(b) & 5(4)(a)


Section 3(1)(b) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

  • None.


The opponent in these proceedings was in the entertainment business and for a number of years had been developing a television cartoon character around the name Spinney the little world and friends. By the relevant date discussions had taken place with various people but no trading activities had taken place.

Under Section 5(4)(a) - Passing Off the Hearing Officer considered the opponent’s claims against the criteria to launch a passing off action and considered that he must fail since, at the relevant date, he had no reputation or goodwill in his mark.

The ground under Section 3(1)(b) related to the distinctiveness of the mark at issue, and the Hearing Officer accepted that it was made up of ordinary dictionary words and that it had descriptive connotations. However, in the absence of evidence from the trade that such a term was required for use descriptively, the Hearing Officer concluded that the mark was not devoid of distinctive character or that it needed to be reserved for traders at large. Acceptance was also in line with the Registrar’s practice in examining "WORLD" marks.

Full decision O/063/98 PDF document25Kb