Trade mark decision

BL Number
O/226/05
Decision date
10 July 2005
Appointed Person
Mr David Kitchin QC
Mark
BARNEYS
Classes
25
Applicant
Baisemark Ltd t/a Northern Suede & Leather
Opponent
Barney's Inc
Opposition
Sections 5(4)(a) & 32(2)(b)

Result

Section 5(4)(a): - Appeal dismissed. Opposition failed.

Section 32(2)(b): - Appeal dismissed. Original decision allowed to stand.

Points Of Interest

  • 1. Review of Rule 11 of the Trade Mark Rules 2000.

Summary

This was an appeal to the Appointed Person by the opponent from the Hearing Officer's decision dated 23 February 2004 (BL O/048/04). In that decision the Hearing Officer had allowed correction of the name of the applicant from Northern Suede & Leather Limited to Baisemark t/a Northern Suede & Leather, albeit with a new filing date being the date of the application to amend the name, and he dismissed the ground under Section 5(4)(a) on the grounds that the opponent had failed to establish that it had a reputation and goodwill in the UK at the relevant date.

On appeal the opponent submitted that the Hearing Officer should not have allowed the change of name of the applicant and that as regards Section 5(4)(a) he had placed too high a burden on the opponent to establish a reputation and goodwill in the UK.

The Appointed Person carefully considered the Hearing Officer's decision and the grounds for appeal. As regards the correction of the applicant's name the Appointed Person was satisfied that in the first instance the application had been properly completed and that a genuine error had been made in giving the applicant's name as Northern Suede & Leather Ltd rather than the correct corporate name of Baisemark Limited. Thus the Hearing Officer could have allowed the change without any alternation to the filing date. However, as no application had been made to change this ruling the Appointed Person declined to intervene.

As regards the ground under Section 5(4)(a) the Appointed Person noted the Hearing Officer’s review of the opponent's evidence and his finding that the opponent had failed to establish that it had a reputation and goodwill in the UK. The Appointed Person also examined the opponent's evidence and came to the same conclusion as the Hearing Officer that the opponent had failed to establish a prima facie case that use by the applicant of its mark would lead to passing-off. Opposition dismissed on this ground.

Full decision O/226/05 PDF document39Kb