Trade mark decision

BL Number
O/228/08
Decision date
11 August 2008
Hearing Officer
Mr O Morris
Mark
GUSTO RESTAURANT AND BAR
Classes
43
Applicant
Living Ventures Restaurants Limited
Opponent
Gusto Inns Ltd
Opposition
Opposition filed in wrong name. Interlocutory hearing to decide if opposition papers could be amended and accepted.

Result

Opposition filed in wrong name: Hearing Officer allowed correction of error.

Points Of Interest

  • As described.

Summary

The background to the administrative dispute is that Gusto Inns Ltd (Inns) own a number of wholly owned subsidiaries including Gusto Pub.Co.Ltd (pub) in whose name the earlier marks relied upon in these proceedings, are registered. The opposition was filed in the name of Gusto Inns Ltd.

The Trade Mark (Relative Grounds) Order 2007 (“the order”) stipulates that an application for registration can only be refused on relative grounds if objection is raised by the proprietor of the earlier mark in question.

The Hearing Officer identified three primary issues for discussion:

1. Could a company lodge an opposition, relying on the earlier marks of a related company.

2. If an error has been made, was it permissible to correct the notice of opposition from one company to another, albeit a related company.

3. If neither of the above was permissible could one company be substituted for another, albeit related company.

As regards the first issue the Hearing Officer decided that as the earlier marks are registered in the name of Pub, and as Pub and Inns are distinct legal entities, then Inns cannot be the opponent on the basis of Pub’s earlier trade marks.

As to the second issue the Hearing Officer accepted the opponent’s explanation that the wrong name had been entered as the opponent because all the companies in the group are essentially owned by one person and that person had entered Inns as the opponent because it is the holding company for the group and most business is done in that name. In all the circumstances the Hearing Officer allowed Pub to be entered as the opponent in place of Inns.

In view of this decision in respect of issue 2 the Hearing Officer did not consider issue 3 firstly. However, in the circumstances of this case he indicated that the substitution of the named opponent by another would not have been allowed.

Full decision O/228/08 PDF document89Kb