Trade mark decision

BL Number

O/177/00

Decision date

18 May 2000

Hearing Officer

Mr A James

Mark

CATHCART PROMS

Classes

41

Applicant

Christopher Victor Palmer-Jeffery

Opponent

The British Broadcasting Corporation (BBC)

Opposition

Sections 5(4)(a), 3(3)(b) and 3(6)

Result

Section 5(4)(a) - Opposition failed

Section 3(3)(b) - Opposition failed

Section 3(6) - Opposition failed

Points Of Interest

• Where a claim is made to exclusive rights in a descriptive term, then that claim must be the subject of a rigorous examination. It will normally require evidence from the public and/or independent evidence from the trade to buttress such a claim and even this may not be sufficient for the Registrar to grant a monopoly.

Summary

The opponents opposition was based on the premise that they had for many years used the marks BBC PROMS and THE PROMS in relation to concerts which they organised each year at the Royal Albert Hall. The applicants admitted such use but disputed the claim that the word PROMS is exclusively associated with the BBC. The filed evidence showing use by others of the word Proms in relation to musical concerts and pointed to the fact that the BBC supported, for example, use by the Music For Youth Organisation of the term "School Proms".

Under Section 5(4)(a) - Passing Off - the Hearing Officer concluded that the word Proms is descriptive of promenade concerts as per the entry in the Concise Oxford Dictionary (8th Edition); that there had been used by others and that despite extensive use by the opponents the word Proms was not solely associated with them. Additionally the applicant had used his mark in relation to concerts at the Royal Albert Hall and no confusion appeared to have occurred. Opposition failed on this ground.

Under Section 3(3)(b) the Hearing Officer was of the opinion that the evidence indicated that this was a matter which had been dealt with under Section 5(4)(a) above. In any event he was confident that there was no deception of the public by use of the mark at issue.

The opponents claimed bad faith because they claimed the applicant had sought to exploit the similarity between his concerts and those of the BBC. The Hearing Officer decided this was a matter of competition and not one of bad faith.

Full decision O/177/00 36Kb