Trade mark decision

BL Number
O/133/00
Decision date
12 April 2000
Hearing Officer
Mr M Reynolds
Mark
AUTO-STOP
Classes
12, 36, 37
Applicant
International Tyre Brands Ltd
Opponent
Auto-Stop Tyre & Exhaust Discount Centres Ltd
Opposition
Sections 5(4)(a)

Result

Section 5(4)(a) - Opposition successful

Points Of Interest

  • 1. In his decision on a related action between the same parties under Section 11 of the Trade Marks Act 1938 (Opposition No 44888), the Hearing Officer explains more fully his reasons for concluding that misrepresentation applied equally to Class 36 services.
  • 2. Consolidation: Even if the parties had been agreeable, it would not have been appropriate to consolidate the present action and the related action (Opposition No 44888) since different Acts were involved.
  • 3. Grounds of Opposition: Although the opponent failed to link the objections to any particular Section of the Act, it was possible to infer that objection arose under Section 5(4)(a), and the matter was therefore not referred back to the parties for clarification late in the proceedings.

Summary

Hearing Officer satisfied that opponent's predecessor in title had established goodwill under the trade mark AUTOSTOP prior to the relevant date, albeit that the business was limited in geographical terms to an area of the West Midlands. He further found that misrepresentation would occur, in that area, in respect of goods and services in Classes 12, 36 and 37, notwithstanding the presentational aspects of the series of marks in suit, and that the opponent was therefore likely to suffer damage in terms of diversion of trade. In respect of the applicant's claim that the opponent’s use of the mark was small in national terms and had been swamped since the relevant date by their own use, the Hearing Officer (following the judgement in Chelsea Man Menswear Ltd v Chelsea Girl Ltd [1987] RPC 189) decided that, although there was no evidence of the opponent's intentions to expand their business nationwide, they did have a significant business at the relevant date. The applicant being aware of the opponent’s earlier right could have sought a territorial limitation under Section 13(1)(b) but had not done so. The opposition was therefore successful.

Full decision O/133/00 PDF document64Kb