Trade mark decision

BL Number
Decision date
1 May 2001
Hearing Officer
Mr M Knight
Matley Ltd of London
Goodnight Products Ltd
Section 3(6)


Section 3(6): - Opposition failed

Points Of Interest

  • Additional evidence - Opponent refused leave to have additional evidence admitted at hearing. It had not been seen by the applicant, and would have required an adjournment, which the Hearing Officer thought was unjustified, having read it.


The opponent’s case under Section 3(6) was that the application in suit was made in bad faith when the applicant was party to an agreement with the opponent, under which it was contracted to promote and sell anti-snoring products under the opponent’s trade mark DAHM’S ORIGINAL GOODNIGHT, (in which GOODNIGHT was most prominent). The opponent further contended that the specification of goods was wider than justified by the applicant’s intended use of the mark (which was for only one of the products covered by the agreement (a gargle/mouthwash purported to be a palliative for snoring).

The Hearing Officer found no real substance in the latter aspect of the opponent’s case. In his view, all of the specified goods could be said by some to be capable of use as anti-snoring palliatives, whether one believed the claims or not (MAGIC BALL case distinguished). Moreover, he further concluded on the evidence, and from a comparison of the respective marks, that there was no bad faith on the applicant’s part in seeking to register a mark (the mark in suit) which differed significantly from the opponent’s mark, even if the same goods were involved and the agreement between them covered use of the opponent’s mark.

Having also given consideration to various disputes which arose between the parties as to the term of their agreement, the Hearing Officer found that the source of this arose from the agreement itself, the drafting of which, in his view left a lot to be desired, this further confirmed him in his view that opposition failed under Section 3(6), the opponent having failed to satisfy him that the applicant’s actions were peremptory rather than reactive.

Full decision O/210/01 PDF document25Kb