Trade mark decision

BL Number: O/220/04
Decision date: 27 July 2004
Hearing Officer: Mr M Reynolds
Mark: VIPER
Classes: 12
Applicant: Robert Dennis Busbridge
Opponent: Kenneth Cook
Opposition: Sections 11, 12 and 17(1) of the Trade Marks Act 1938 (as amended)

Result

Section 11 - Opposition failed.

Section 12 - Opposition failed.

Section 17(1) - Opposition failed.

Points Of Interest

In view of his comments regarding assignment the question of recordal was looked at again by the Registry and after investigation refused. See Hearing Officer’s decision dated 31 August 2005 (BL O/239/05).

Summary

The mark in suit here was previously the subject of a dispute before the Registrar when Mr Cook (the current opponent in these proceedings) successfully opposed an application by Chrysler Motor Corporation to register the mark VIPER. In those proceedings Mr Busbridge (the current applicant) gave evidence on behalf of Chrysler.

In these proceedings the Hearing Officer expressed concern about the quality, accuracy and veracity of the documentation placed before him by both parties and noted that the cross examinations carried out at the hearing did little to clarify matters. It did, however, point out the reason and nature of the dispute between the two parties.

The Hearing Officer decided that the essential matter to be decided in these proceedings was the ownership of the mark and rights and goodwill at the relevant date, that being the date of application 18 May 1992, in the context of Section 17(1) of the 1938 Act.

The evidence established to the Hearing Officer's satisfaction that Mr Cook (the opponent) had adopted the mark VIPER in relation to specialist sports cars, in kit form, in 1985 and the sale of such kits was operated through a Limited Company called Brightwheel Limited. To protect his rights in the mark VIPER a document was drawn up in 1986 in which Brightwheel Limited recognised the rights of Mr Cook in relation to the mark VIPER. In 1986 Venture Capital was offered and invested in 1987 and a new company Brightwheel Replicas Ltd (BRL) was set up with Atlantic owning 100% of the shares. Mr Cook was managing director and managed the day to day running of the business. In 1987 following an approach by Mr Busbridge he and his brother were appointed as agents for London and the South East. Their company was Cobretti Engineering.

In late 1987 a large order was received from a Japanese company but only part of the order was completed before funding became an issue. As Atlantic refused further funding Mr Cook resigned and eventually BRL was closed down and a winding up order was made on 10 April 1991. There is little detail about ownership of the mark during BRL's period of trading but the Hearing Officer concluded that in the absence of specific detail that goodwill in the mark VIPER would have accrued to BRL. Indeed BRL applied to register the mark VIPER in 1989 but the application was not pursued. Following the demise of BRL the trading 'situation' was confused, with it would appear, both Mr Cook through Classic Replicas and Mr Busbridge through Cobretti Engineering producing VIPER cars. It would appear that sales were through Cobretti Engineering as Mr Cook wished to avoid angry customers who had lost money when BRL ceased business. All advertising was carried out by Cobretti during this period. From May 1991 Mr Cook spent some time in Switzerland where he says he was building a car for a client in that company. In his consideration of the evidence relating to this period the Hearing Officer noted that there was no evidence to indicate that BRL had disposed of any goodwill in the mark VIPER and from a public point of view Cobretti had become the continuing name associated with the sale of VIPER car kits, he concluded that they had acquired the goodwill in the name and were entitled to claim proprietorship when they made their application for registration on 18 May 1992.

Opposition thus failed on the Section 17(1) ground.

In the light of his decision under Section 17(1) the Hearing Officer concluded that the opposition under Section 11 must also fail.

The opponent Mr Cook is the proprietor of a registration for the mark VIPER in respect of "Motor Vehicles&quot. This mark was applied for on 20 April 1996 and progressed to registration on the basis of honest concurrent use. As this mark has a filing date it cannot be used to oppose a mark with an earlier filing date so opposition on this ground also failed. The mark is currently the subject of invalidation proceedings by Mr Busbridge.

Assignment

During the pending period of the mark in suit two assignments had been filed and actioned by the Registry. By way of a TM16 filed on 13 March 2002 Autotrak Limited took assignment of the application from Cobretti Engineering as of 22 October 1992. By way of a TM16 filed on 19 April 2002 Robert Dennis Busbridge took assignment of the application from Autotrak Limited. The legality of these documents were questioned by Mr Cook but the Hearing Officer did not feel that it was a matter he could deal with. The proceedings before him was whether or not the mark applied for could be registered and he had decided that, as the opposition had failed, the mark could be registered. However, there was no provision for the assignment of pending marks (solus) in the 1938 Act and this was still a 1938 Act application until it was placed on the Register. At that stage the provisions of the 1994 Act would take effect.

Having considered the matter in detail the Hearing Officer concluded that the recordal of the assignments mentioned above were errors of procedure before the Office. If Mr Cook wished to question their legality then he could do so by way of rectification under the 1994 Act.

Full decision O/220/04 104Kb