Trade mark decision

BL Number
O/210/05
Decision date
25 July 2005
Hearing Officer
Mr M Foley
Mark
SPA CAPSULE
Classes
10, 28, 41, 44
Applicant
Andrew Messenger
Opponent
Debra Jayne Woomble
Opposition
Sections 3(6) & 5(4)(a)

Result

Section 3(6): - Opposition successful.

Section 5(4)(a): - Opposition failed.

Points Of Interest

  • 1. None

Summary

The opponent claimed that the SPA CAPSULE name and SPA CAPSULE logo (as filed by the applicant) is owned by an American Company called Simulated Environment Concepts Inc and that she and her company Insparation Limited are the sole authorised users of the names in the UK.

Only the opponent filed evidence in these proceedings. By way of background she explains that she worked with the applicant Mr Messenger until June 2003 in connection with the sale of Aqua Massage products, which are competitive products and for which Mr Messenger is the sole authorised dealer in the UK. In May 2003 the applicant registered the domain names spacapsule.co.uk and Insparation.co.uk and formed a company called Insparation Limited with a view, presumably, of setting up a business selling SPA CAPSULE products in the UK. Subsequently, following the opponent's departure from Mr Messenger's company, Mr Messenger registered the company names Spa Capsule (UK) Limited and Spa Capsule Limited and sought to have the domain names transferred to his ownership. He applied for registration of the mark in suit on 15 August 2003.

The opponent has filed evidence of her promotion of the mark SPA CAPSULE in 2003 but has been unable to file any evidence of sales prior to the relevant date which would give rise to a reputation or goodwill prior to that date. She has, however, also filed evidence relating to her dispute with Mr Messenger and evidence from the American owner of the mark that she is their sole representative in the UK and that they have never negotiated with Mr Messenger who, they point out, represents a competitor.

The ground under Section 5(4)(a) was dismissed by the Hearing Officer as the opponent had not established a goodwill or reputation prior to the relevant date.

The ground under Section 3(6) questioned the applicant's intention to use the mark in suit since he did not own it and was not appointed as an authorised user. As the applicant had not responded to evidence filed by the opponent, the Hearing Officer accepted that the mark in suit had been applied for in the knowledge that another party owned the mark and that it had appointed a third party to use the mark in the UK. The application had, therefore, been made in bad faith and the opponent succeeded on this ground.

Full decision O/210/05 PDF document91Kb