Trade mark decision

BL Number

O/216/05

Decision date

1 August 2005

Hearing Officer

Mr M Foley

Mark

Highwayman

Classes

25

Applicant

Lewis Leathers Limited

Opponent

Aero Leather Clothing Ltd

Opposition

Sections 5(2)(a) & (b), 5(3), 5(4)(a) & (b) & 3(6)

Result

Section 3(6): - Opposition failed.

Section 5(2)(a) & (b): - Opposition failed.

Section 5(3): - Opposition failed.

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

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

Points Of Interest

• 1. The parties appealed to the Appointed Person on the basis that they had been in negotiation and had been in touch with the Registry advising it of this fact and had requested that no decision be issued. As in previous cases of this nature the Appointed Person set aside the decision and the order for costs. See decision dated 16 January 2006 (BL O/019/06).

Summary

The opponent referred in its grounds of opposition to an application for registration of the mark HIGHWAYMAN in Class 25 with the number 3559929. The Hearing Officer established that this application had matured to registration as a Community Trade Mark and that it had a priority date of 22 December 2003. As this is after the date of application of the mark in suit 31 July 2003, the Hearing Officer concluded that the opponent must fail in its grounds of opposition under Sections 5(2)(a) & (b) and 5(3).

The opponent also filed evidence of use of its mark and while this evidence was not always specific or detailed, the Hearing Officer accepted that there had been use of the name HIGHWAYMAN from 1987 up to and beyond the relevant date. There was, however, little evidence to support the claim that a script version of the mark, similar to the mark in suit, was used during a period in the 1980's. There was use of such a mark in connection with a 20th anniversary edition of the HIGHWAYMAN jacket in 2003 but again there was no evidence to show that such use was prior to the relevant date.

Under Section 5(4)(a) - passing off - the Hearing Officer accepted that the opponent had a goodwill in its mark at the relevant date and thus succeeded under this ground. In so finding, the Hearing Officer noted that the applicant had claimed to have owned the mark HIGHWAYMAN from 1986 and to have been the proprietor of a registration for the mark HIGHWAYMAN. However, the applicant had filed no evidence of use; indeed it had filed no evidence whatsoever, so any claims made had to be disregarded.

The opponent failed in its grounds under Sections 5(4)(b) and 3(6) since it had failed to establish use and reputation of the mark HIGHWAYMAN in the script version of the mark which it claimed was identical to the mark in suit.

Full decision O/216/05 63Kb