Trade mark decision
- BL Number
- O/222/07
- Decision date
- 6 August 2007
- Hearing Officer
- Mr G Salthouse
- Mark
- OTO O.T.O. O T O O.T.O
- Classes
- 09, 16, 41
- Applicant
- Ordo Templi Orientis
- Opponent
- Starfire Publishing Limited
- Opposition
- Sections 1(1), 3(1)(a),(b),(c) & (d), 3(6) & 5(4)(a)
Result
Sections 1(1) & 3(1)(a): Opposition successful. Section 3(1)(b): Opposition successful. Sections 3(1)(c) & (d): Not considered. Section 3(6): Opposition failed.
Points Of Interest
- As described.
Summary
The name Ordo Templi Orientis is the name of a religious sect or cult which was formed in 1905. A UK branch was formed by a Mr Crowley in 1913 and since that time the name and acronym OTO has been known and used in the UK. Over the years there has been splits in the organisation and members have left and formed their own branches or written about the organisation.
In these proceedings the opponent states that it has published a magazine since 1995 under the name STARFIRE which is sold to members of the Typhonian Order Templi Orientis. This magazine was last published in 1999 with the next edition due in 2004. The print run is some 600 copies and takes about five years to sell. It also filed evidence of others using the name or acronym and evidence of other individuals about the cult and its history and confirming that the name and acronym are generic rather than a trade mark which is owned by any one party.
The applicant is apparently referred to as the Caliphate Orodo Templi Orientis and it claims to be the true heir to the group formed by Aleister Crowley. It claims that the name and initials Ordo Templi Orientis OTO have not come into common use and that parties using the name and initials do not have equal claims to legitimacy. It would also appear, from the evidence that the applicant established ownership of the copyright and published works of Aleister Crowley. The applicant also stated that the name ORDO TEMPLI ORIENTIS is registered in the UK as a CTM and provided copies of the registration certificates.
In the opponent’s reply evidence reference is made to a US Court decision which indicated that others, apart from the applicant, might have a claim to the OTO legacy and a Swiss group is mentioned. A Mr Robert Carley states that meetings of Albion OTO are held monthly in Central London.
Under Sections 1(1) and 3(1)(a) the Hearing Officer concluded, without deciding on the legitimacy of the various groups, that the titles OTO and O.T.O. are used generically by various groups who follow the beliefs of Thelema or Thelemic Law and members are aware that there is more than one group using these terms. The marks in suit cannot act as trade marks denoting the goods or services of a single entity. Opposition, therefore, succeeded on these grounds.
The Hearing Officer went on to find that the opposition succeeded under Section 3(1)(b). He saw no need to consider the matter under Sections 3(1)(c) & (d).
In its evidence the applicant claimed use of its mark on a modest scale with estimated turnover in respect of the sale of books in 2004/5 of £10,000. No supporting documentation was filed and the Hearing Officer concluded that this evidence on its own was not sufficient to establish that the marks at issue had become distinctive though use as denoting the goods of a single entity. Therefore the success of the opposition in respect of Section 1(1) and Section 3 remained.
As regards the ground under Section 3(6) the Hearing Officer concluded that the applicant was probably aware of rival claims to the marks in suit when it filed its application but that was insufficient to prove bad faith. Opposition failed on this ground.
Full decision O/222/07 
72Kb
