Trade mark decision

BL Number
O/158/06
Decision date
13 June 2006
Hearing Officer
Mr M Foley
Mark
CHELSKI
Classes
24, 32, 33
Applicant
Chelski Limited
Opponent
Chelsea Football Club Limited
Opposition
Sections 5(3), 5(4)(a) & 3(6)

Result

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

Points Of Interest

  • None

Summary

The mark in suit had been coined by the media at the beginning of July 2003 when Chelsea Football Club was purchased by the Russian business man Roman Abramovich. Subsequently Chelsea had made use of the term and registered it in Class 25 in respect of articles of clothing. They now consider that the term is closely linked to the Football Club and that the public would be deceived if they saw use by others.

The applicant says that a business colleague heard the term CHELSKI on 1 July 2003 and thought it would make an excellent brand name. It was registered as a domain name and company name and application was made for registration of the mark in Classes 24, 32 and 33. Subsequent attempts to develop the mark as a brand of vodka and not been successful and an approach had been made to Mr Ken Bates, the then Chairman of Chelsea, to either purchase the mark or alternatively enter into a joint venture.

In these proceedings the opponent had only applied to register the mark CHELSKI in Class 25 prior to the applicant applying in other classes and it had not proved user or reputation in the mark at the time the applicant made its application on 16 October 2003 in respect of different goods. The Hearing Officer thus found that the opponent failed in its opposition under Sections 5(3) and 5(4)(a).

Under Section 3(6) the opponent claimed “bad faith” but the applicant had shown that he had tried to put the mark into use in relation to “vodka” before making his approach to the Football Club in December 2003. When the applicant adopted the mark the opponent had no ownership or reputation in it and the Hearing Officer concluded that it also failed in this ground of its opposition.

Full decision O/158/06 PDF document78Kb