Trade mark decision

BL Number
Decision date
22 June 2000
Hearing Officer
Mr M Foley
Device of a smiling face Series of Two
Boxer Holdings Inc (assigned from Joe Boxer Corporation)
Barter International Group Limited
Section 3(1), 3(6) and 5(4)(a)


Section 3(1) - Opposition failed

Section 3(6) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • None.


The opponents claimed to have designed the logo of a smiling face in 1971 and to have used it throughout the world since 1972. Some use claimed in the UK but such use not substantiated. The applicants claimed the logo was created in the USA by a Mr Harvey Ball in 1963 and they claimed to have used it since 1993 and from 1994 in the UK.

Under Section 5(4)(a) - Passing Off - The Hearing Officer concluded that the opponents had not substantiated their claim that their mark had been used in the UK and that it was well known. Opposition failed on this ground.

With regard to distinctiveness under Section 3(1) the opponents had suggested that others had used a "happy face" device in the UK but had not supported this claim with any factual evidence. In the absence of such evidence, the Hearing Officer concluded that the mark applied for was a good and registrable mark.

The ground under Section 3(6) - bad faith - also failed because the opponents had filed no evidence to substantiate their claims that the mark was well known in the UK at the relevant date and that it belonged to them.

Full decision O/213/00 PDF document29Kb