Trade mark decision

BL Number: O/157/08
Decision date: 29 June 2008
Appointed Person: Ms Anna Carboni
Mark: OTO O.T.O OTO O.T.O.
Classes: 09, 16, 41
Applicant: Ordo Templi Orientis
Opponent: Starfire Publishing Limited
Opposition: Sections 1(1), 3(1)(a), (b), (c) & (d) and 3(6)

Result

Sections 1(1) & 3(1)(a)-(d): Appeal allowed. Opposition failed. Section 3(6): Decision confirmed. Opposition failed.

Points Of Interest

1. Ruling as regards Section 3(1)(a) Paragraph 14.
2. Filing of respondent’s notice in appeals to the Appointed Person paragraphs 36-38.

Summary

In his decision dated 6 August 2007 (BL O/222/07) the Hearing Officer found in favour of the opponent on the basis that the marks in suit were used by other parties, were generic and not distinctive. The applicant appealed to the Appointed Person.

In her overview of the conflict the Appointed Person observed that this case is complex in both facts and law. As regards the history of the dispute the Appointed Person believed that as the groups using the marks were relatively small, only a few hundred people at most, the average consumer of the goods and services applied for would not be aware that there was more than one group calling itself OTO. Thus the Hearing Officer had been wrong to accept the opponent’s submission that the average consumer would be people interested in the occult or Thelma teaching.

Secondly the absolute of grounds of refusal do not mean, as contended by the opponent, that a mark that is used by more than one entity must be refused as being incapable of serving as a badge of origin. Indeed other provisions of the Act expressly permit the possibility of co-existence of identical marks on the register and in use. In the appointed Person’s view none of the grounds of objection have been established and thus the opposition must fail.

As a first step the Appointed Person considered the evidence filed in the proceedings and confirmed the Hearing Officer’s finding that more than one organisation used OTO prior to and as at the application date. However, she confirmed her view as to a wider definition for the “average consumer” by noting that the specifications of the goods and services applied for were not restricted to specific subjects or categories and secondly, that very few consumers would be aware of the various organisations involved in these proceedings because of their size and specialised nature. The Hearing Officer, therefore, was in error in restricting the “average consumer” to those interested in the occult.

Turning to the grounds of appeal; the Hearing Officer’s decision and the grounds of opposition the Appointed Person focused on Section 3(1)(a) and the claim by the opponent that there is no category of mark that is excluded from registration under Section 3(1)(b) (c) or (d) but which is nonetheless excluded from registration by Section 3(1)(a). The Appointed Person carefully considered guidance from the ECJ and other prior court decisions and ruled that Section 3(1)(a) is a filter to prevent registration of signs which are not capable of being trade marks and OTO does not fall into that category of mark. Therefore, OTO should be judged for registrability purposes under Section 3(1)(b), (c) and (d).

As regards Section 3(1)(b) there was no reason why OTO should not be accepted as a registrable mark since it would mean nothing to the vast majority of ordinary consumers of the goods and services at issue. Opposition failed under this heading.

The Hearing Officer did not consider Section 3(1)(c) because of his decision under Section 3(1)(a) and (b) so the Appointed Person dealt with it from scratch. The Appointed Person did not consider the marks ORO or O.R.O. to be descriptive and found support for this view from the way in which the applicant and other parties used these signs in relation to the names of their organisations. Again the average customer would have no perception that these marks were in any way descriptive. Therefore, marks not objectionable under Section 3(1)(c).

As regards Section 3(1)(d) the Appointed Person rejected the opponent’s view that the marks at issue are generic or in any way descriptive insofar as most consumers would be concerned. Opposition also failed on this ground.

The Appointed Person decided in view of her decisions under Section 3(1)(b) (c) and (d) that there was no need to consider the proviso to Section 3(1)(b) and (d) in respect of the use claimed by the applicant.

Returning to Section 3(1)(a) the Appointed Person confirmed her view that no category of mark not covered by Section 3(1)(b)-(d) could fall foul of Section 3(1)(a). Hearing Officer’s decision under this head overturned.

The Appointed Person upheld the Hearing Officer’s decision under Section 3(6) where he had found that the application was not made in bad faith even though the applicant was aware of use of the marks in suit by others. The Appointed Person also observed that this is not a “fraudulent misappropriation” type of case since no third party had shown that it had better rights than the applicant. In relation to the monopoly right granted by registration the Appointed Person expressed the view that other parties might be able to use the marks OTO/O.T.O. in the names of their organisations; might be able to use them descriptively or have a defence based on earlier use in a particular locality (paragraph 124).

Full decision O/157/08 135Kb