Trade mark decision

BL Number: O/122/07
Decision date: 9 May 2007
Hearing Officer: Mr G Salthouse
Mark: HYDRO-KIK
Classes: 41
Applicant: Ms Lyn Hickey
Opponent: The Swimming Teachers’ Association Limited
Opposition: Sections 3(6) & 5(4)(a)

Result

Section 3(6): Opposition failed. Section 5(4)(a): Opposition failed.

Points Of Interest

As described

Summary

The applicant in these proceedings was a water aerobics instructor from 1999 onwards and commenced to run workshops in 2001. In 2003 she joined the Swimming Teachers Association (STA) on a part-time basis of 10 hours per week as the Aquacise Co-ordinator. She continued to run workshops and aquatic presentations in her own right. During this period there was some focus on aquatic exercise based on martial arts and one of her courses was called KIKFIT. She was offered the opportunity to enter into partnership with STA but declined.

During the period of employment at STA Ms Hickey did an article under her own name in the STA house magazine and ran a competition for a new name for water based martial arts exercise and the name Hydro-Kik was declared the winner. Ms Hickey provided the prize for the winner.

Ms Hickey claims that she developed the Hydo-Kik Course herself, during which time she travelled to the USA at her own expense, attended training sessions and took academic qualifications. STA were not involved in any way in the development of this training course.

The opponent pointed to the fact that Ms Hickey was employed by it during the development of the Hydo-Kik training course and it had been part of her duties to develop a water based training course and to develop the aquacise brand.

Under Section 3(6) the Hearing Officer noted that Ms Hickey was employed by STA for only 10 hours each week and she had made clear to STA that this was insufficient time to do all the work envisaged by STA, particularly the development of new courses. During this period she had continued to run her own workshops and had developed a new course under the name proposed in the competition organised and run by herself. She had also presented the prize to the winner and STA had had no involvement. Having carefully considered the claims and counterstatements, including the results of the cross examination of Ms Hickey, the Hearing Officer concluded that Ms Hickey was the rightful owner of the mark Hydro-Kik and she was not acting in bad faith when she applied to register it.

The opponent also failed in its ground under Section 5(4)(a), passing off. As the Hearing Officer had decided that the applicant owned the mark in suit there could be no basis for damages or misrepresentation.

Full decision O/122/07 54Kb