Trade mark decision

BL Number
O/143/00
Decision date
27 April 2000
Hearing Officer
Mr M Foley
Mark
RENNIE MACKINTOSH
Classes
14
Applicant
Carrick Jewellery Ltd
Opponents
Chateau Watches Ltd & George Panton & Son Ltd
Opposition
Sections 3(1)(a), (b), (c) & (d); Sections 3(3)(a) & (b), and Sections 5(4)(a) & (b)

Result

Sections 3(1)(b) & (c) - Opposition successful

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

Sections 3(3)(a) & (b) - Opposition failed

Sections 5(4)(a) & (b) - Opposition failed

Points Of Interest

Summary

The application proceeded on the basis of distinctiveness acquired through use, with a voluntary disclaimer of any rights to the words RENNIE MACKINTOSH, but the Hearing Officer had no difficulty in finding that in any event those words were devoid of any distinctive character in relation to the goods in question (watches), since the evidence established that the words were descriptive of goods made in the style of Charles Rennie Mackintosh and that there was significant prior use of the words by a number of traders to describe such goods. It was further found that the typeface used in the representation of the mark was the same or very similar to typefaces used by other traders in relation to goods associated with the design of Charles Rennie Mackintosh. Opposition under Section 3(1)(b) and (c) therefore succeeded, though not under Sections 3(1)(a) and (d). Opposition under Sections 3(3)(a) and (b) also failed, the Hearing Officer taking the view that use of the mark would not be contrary to public policy, or create public deception, since there was no prescribed design associated with the noted designer, and the consumer was unlikely to have a fixed idea what to expect or to purchase a watch without inspection.

Opposition under Sections 5(4)(a) and (b) was dismissed since the opponents failed to identify any relevant rights in any earlier trade mark, sign or otherwise.

Full decision O/143/00 PDF document27Kb