Trade mark decision

BL Number
Decision date
5 March 2002
Hearing Officer
Mr M Knight
Ministry of Sound Recordings Limited
Virgin Records Limited
Sections 3(1)(a); 3(1)(b); 3(1)(c) & 3(1)(d)


Section 3(1)(a): - Opposition failed.

Section 3(1)(b): - Opposition successful.

Section 3(1)(c): - Opposition successful.

Section 3(1)(d): - Opposition successful.

Points Of Interest

  • 1. Combinations of descriptive and generic terms
  • 2. Expert witnesses
  • 3. Acquired distinctiveness


The opponents’ case, in essence, was that the marks merely described a type of music and the group at which that music was aimed. The Hearing Officer could not find that the basis for a Section 3(1)(a) objection had been made out and he dismissed that ground. Turning to the remaining grounds the Hearing Officer noted that it was common ground between the parties that the first element in each of the marks in suit was descriptive of a style or genre of music. The questions therefore posed were (a) was the word NATION one which was in common use at the date of application to describe a group of people with shared tastes in music and (b), if the word NATION is descriptive is the whole sign sought to be registered, in each case, one which must be refused registration?

Evidence had been brought forward as to the meaning of the word NATION as used in the music industry. Taking account of the evidence and submissions, the Hearing Officer concluded that within the music industry NATION was indeed a descriptive term.

He went on to find that a descriptive term combined with a generic term produced a normal term for denoting the goods. He therefore found the opposition succeeded under Sections 3(1)(b), (c) and (d).

Full decision O/099/02 PDF document34Kb