Trade mark decision

BL Number

O/123/04

Decision date

3 March 2004

Appointed Person

Mr David Kitchin QC

Mark

FAIRLIGHT

Classes

34

Applicant

Axel E Hertlein

Opponent

Rothmans of Pall Mall Limited (London) & Rothmans of Pall Mall Limited (Switzerland)

Opposition

1. Sections 3(6) and 5(4)(a). 2. Request to refer appeal to the High Court.

Result

Request by Registrar to refer appeal Appeal referred to the High to the High Court: - Appeal referred to the High Court

Points Of Interest

• 1. See also Hearing Officer's decision dated 16 September 2003 (BL O/280/03).
• 2. See award of costs decision by the Appointed Person dated 24 March 2005 (BL O/181/05)

Summary

The essential ground of opposition by the opponents was that the applicant intended to use the mark in suit with similar get up and packaging as they used with their ROTHMANS mark. In her decision dated 16 September 2003 (BL O/280/03) the Hearing Officer decided that she could not consider matters which appeared to be divorced somewhat from the application in suit. She found the respective marks FAIRLIGHT and ROTHMANS to be very different and found that the opposition was unsuccessful under both Sections 3(6) and 5(4)(a). The opponents appealed to the Appointed Person.

Both the applicant and the opponents wanted the appeal to be decided by the Appointed Person but the Registrar asked for the appeal to be referred to the High Court as it was considered that there was a point of general legal importance to be decided. In relation to the circumstances at issue here the Registrar wished to have guidance as to how wide her scope of enquiry could extend when there were grounds to doubt the bona fides of the applicant and whether he might use his mark in a deceptive manner.

The Appointed Person considered the matter fully, particularly as regards costs, but decided in this case to refer the proceedings to the High Court for decision.

Full decision O/123/04 21Kb