Trade mark decision

BL Number
Decision date
3 April 2003
Hearing Officer
Mr M Reynolds
Scott USA Inc
Schott Bros, Inc
Sections 1(1) & 3(1)(a), 5(2)(b) & 5(4)(a)


Sections 1(1) & 3(1)(a) - Opposition failed.

Section 5(2)(b) - Opposition failed.

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

Points Of Interest

  • 1. None


The opponents opposition was based primarily on their ownership of a registration for the mark SCHOTT N.Y.C. in Class 25 for the same and similar goods as those of the applicants. They also claimed user in the UK from 1976 onwards, directed towards clothing for cyclists and motorcyclists. Turnover in the last relevant year was some £3.4m with some £60k spent on advertising.

The applicants also claimed to have used their mark in the UK from 1978 onwards. Initially motorcycle goggles were sold but various clothing lines were added and more recently the applicants have entered the off-road bicycle market and goods to this market include clothing, gloves, handlebar grips and bags. Turnover in recent years has been some £2.5m, 40% of which was said to relate to clothing.

As regards the ground under Sections 1(1) and 3(1)(a) the Hearing Officer noted that it had been poorly pleaded at the outset. Following discussions with the Registry the wording had been amended but it still was somewhat vague. In any event the opponents case appeared to be that SCOTT was a common surname and thus not registrable. However, the requirements for Sections 1(1) and 3(1)(a) had a very low threshold and there appeared to be no reason why a surname could not act as a trade mark. Opposition failed on this ground. [It is to be noted that the applicants mark proceeded to advertisement on the basis of acquired distinctiveness.]

In relation to the ground under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue so the only matter for consideration was a comparison of the respective marks SCOTT and SCHOTT N.Y.C. (N.Y.C. disclaimed). Despite the opponents use of their mark the Hearing Officer did not consider that its distinctiveness was enhanced by such use. The Hearing Officer believed that both marks would be recognised as surnames and that the public have learned to distinguish different surnames with quite small differences. While he accepted in this case that the marks were phonetically close he concluded, taking all the relevant factors into account, that the marks were not confusingly similar. Opposition failed on this ground.

In view of his decision under Section 5(2)(b) the Hearing Officer decided that the opponents could be in no better position under Section 5(4)(a) – Passing Off. Opposition also failed on that ground.

Full decision O/086/03 PDF document498Kb