Trade mark decision

BL Number
Decision date
31 July 2006
Hearing Officer
Mr D Landau
Applicant for Invalidation
The Professional Golfer Association
Registered Proprietor
Ladies Professional Golf Association
Section 47(2) based on Section 5(4)(a)


Section 47(2) based on Section 5(4)(a): Invalidity action failed.

Points Of Interest

  • None.


The Hearing Officer considered carefully the material date(s) of these proceedings and asked Counsel to address this point in their submissions. Subsequently the Hearing Officer decided that the date of application for registration of the mark in suit, the 18 December 1992, was a relevant date. However, as this was a passing-off case the position of the two parties subsequently was also important and he decided that a second material date was relevant, the date of the hearing on 6 June 2006.

The Hearing Officer has referred to the registered proprietor as US and the applicant as UK for ease of reference in his decision. This history of both parties is referred to in detail. US is well known as the leading ladies golf tour in the USA with many prominent members. It was formed in 1974. It has, however, only used its mark in relation to ladies golfing clothing and golf clubs and has a limited reputation in this context.

UK has a long history of being known as The Professional Golfers Association in the UK and its use of its mark in relation to goods has been more extensive and consistent. A claim that the opponent’s mark PGA was generic was dismissed by the Hearing Officer who noted that the law of passing-off does not require exclusive use of a sign.

With regard to the first material date the Hearing Officer noted that the 1992 Solheim Cup took place in the UK prior to this date and there was widespread publicity and press comment about this bi-annual contest between lady golfers from USA and lady golfers from Europe. There were many references to US in the press and the Hearing Officer observed that there was a presumption that the reader would know what was meant by the letters LPGA. He considered it thus reasonable to assume that the average golfer would identify the LPGA logo with the US organisation in relation to golf clubs, golf bags and golf balls. Consequently there would be no deception or confusion as regards UK’s mark and therefore the passing-off claim must fail.

This finding effectively decided the proceedings as UK had to success as regards the first date. However, the Hearing Officer also considered the situation at the second date, the date of the hearing. He concluded that because of continued publicity US was now in a much stronger position and that UK also failed in its passing-off claim at this later date.

Full decision O/214/06 PDF document156Kb