Trade mark decision

BL Number

O/204/07

Decision date

20 July 2007

Hearing Officer

Mr M Reynolds

Mark

GO OUTDOORS

Classes

20, 22

Applicant

CCC Outdoors Limited

Opponent

Mr Craig Piercy

Opposition

Sections 3(6) & 5(4)(a)

Result

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

Points Of Interest

• The opponent was cross-examined during the proceedings and accepted by the Hearing Officer as a reliable witness

Summary

The opponent in these proceedings claimed to have used the mark GO OUTDOORS and device from March 2003 onwards in relation to the conduct of his retail services business consisting of sales and advice relating to outdoor furniture, outdoor pursuits equipment and associated accessories.

In his evidence the opponent said that he and the applicant were in the same area of trade and this trade had a restricted number of suppliers. He submitted that as the applicant had been in this trade for a number of years under another mark it must have been aware of the opponent when it filed its application. The opponent also said that because the word elements of the respective marks were identical, this had caused confusion among suppliers and he pointed to instances of invoices being sent to the wrong party.

In its evidence the applicant filed evidence as to its adoption of the mark in suit and pointed to the fact that as the opponent was only trading from one outlet his reputation was not great and his business had not come to light when the searches for the mark in suit were carried out.

Under Section 3(6), bad faith, the Hearing Officer accepted that the applicant had adopted its mark honestly and had been unaware of the opponents business when it had made its application. Opposition thus failed on this ground.

Under Section 5(4)(a) - Passing Off, the Hearing Officer noted that the applicant was a much bigger trading entity than that of the opponent. However, there was no doubt that the opponent carried on a significant business from March 2003 which was before the applicant commenced using its mark in May 2004. The Hearing Officer went on to conclude that the opponent had a goodwill at the relevant date and that then would be misrepresentation and damage if the applicant used its mark. Opposition succeeded on this ground.

Full decision O/204/07 180Kb