Trade mark decision

BL Number
Decision date
12 June 2007
Hearing Officer
Mr M Foley
Gerard Dugdill
The Institute of Cancer Research Royal Cancer Hospital & Everyman Action against Male Cancer
Sections 3(6) & 5(4)(a)


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

Points Of Interest

  • The goodwill of a charity can be protected.


The opponents in these proceedings state that the EVERYMAN Company was formed in 1996 to spearhead a campaign to raise awareness and funding for the prevention of prostate and testicular cancer. Since that date a number of high profile events have been organised and there has been extensive publicity and sponsorship by a number of well known UK companies. As part of their activities there was an association with the publishers of a magazine called AWARE by Blue Moon Publishers (the original applicant for the mark in suit). Consideration has more recently been given to the publication of their own magazine under the mark EVERYMAN in association with Excess Media Ltd, a company formed by employees previously in the employ of Blue Moon Publishers.

The current applicant in these proceedings claims that his company own rights in the EVERYMAN mark because the mark was used in advertisements in its magazine AWARE. He also sees the application as a weapon in his dispute with Excess Media Ltd. Under Section 5(4)(a) - Passing Off - the Hearing Officer accepted that the opponents have a reputation in their mark and that they owned the goodwill at the relevant date. Thus if the applicant was to use the mark in suit in relation to the goods at issue there would be misrepresentation and damage to the opponents goodwill. Opposition under this head thus succeeded.

With regard to the Section 3(6) ground the Hearing Officer concluded that the applicant could not claim any rights in the mark in suit merely because it was published in its magazine and it was wrong to try and use an application for registration of a mark, which it did not own, as a weapon in a dispute with another company, a dispute which did not involve the opponents. Opposition thus also succeeded on this ground.

Full decision O/166/07 PDF document46Kb