Trade mark decision

BL Number

O/192/05

Decision date

5 July 2005

Hearing Officer

Mr G Salthouse

Mark

CHEERS

Classes

21

Applicant for Revocation

Miles Samaratne

Registered Proprietor

Paramount Pictures Corporation

Revocation

Sections 46(1)(b) & 46(5)

Result

Section 46(1)(b): - Application failed.

Section 46(5): - Application successful. Specification reduced to "tankards, glasses and mugs".

Points Of Interest

• 1. The decision in this case, as to whether use of the mark CHEERS in script form was the same as use of the registered mark, followed previous decisions by the Registrar in considering disputes between these two parties.

Summary

The registration in Class 21 has a specification reading "Stirrers, tankards, glasses, mugs, cups, bottle openers, corkscrews, bottle cradles, wine buckets, cocktail shakers, ice buckets, all included in Class 21".

The registered proprietor filed evidence of use of the registered mark in a different form from that registered and only in respect of "tankards, glasses and mugs" so the other items in the specification were not defended. In his decision the Hearing Officer ordered that with the exception of "tankard, glasses and mugs" the other items should be deleted from the specification of the registered mark.

As regards the use shown of the registered mark, that use showed use of CHEERS in "italicised script", which is a commonplace font, and the Hearing Officer considered that any stylisation did not alter the distinctive character of the mark as registered. Nor did he consider that the presence of the geographical place name LONDON impacted on the distinctiveness of the mark as registered.

While the use shown by the registered proprietor was not substantial the Hearing Officer accepted that genuine use of the mark as registered had been proved in respect of "tankards, glasses and mugs". However, the other items listed in the specification must be deleted from the specification of the registered mark.

The use in this case was by a licensee but no copy of the license was filed in the proceedings. However, the Hearing Officer considered that sufficient information had been provided in the registered proprietor's evidence to show that there was a license agreement between the registered proprietor and the user of the mark in suit.

Full decision O/192/05 171Kb