Trade mark decision

BL Number: O/233/98
Decision date: 18 November 1998
Hearing Officer: Mr M Reynolds
Mark: GAMESTERNET
Classes: 38, 42
Applicant: Gamester Multimedia Ltd
Opponent: Leda Media Products Ltd
Opposition: Section 3(1), Section 3(6) and Section 5(4)(a)

Result

Section 3(1) - Opposition failed

Section 3(6) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

None

Summary

This application was made on 19 September 1996 in Classes 38 and 42 in relation to telecommunication services relating to the internet and the provision of internet services. The opponents claimed to have used the mark GAMESTER from 1992 in relation to a range of products and support items for interactive electronic entertainment systems. Turnover for 1993 was £3.5m rising to £4.3m by 1996.

Under Section 3(6) - Bad Faith - the opponents claimed that the applicants specifications were too wide and that the application had been filed after the applicants had been advised by the opponents of what they considered to be their rights. As regards the first point the Hearing Officer did not see that the specifications claimed were unduly wide and as regards the second he noted from the papers that the applicants had been in business before they were contacted by the opponents. It appeared, therefore, that both parties had coined their marks independently.

With regard to distinctiveness under Section 3 the opponents had filed no evidence to support their claims on this ground. Prima facie therefore there appeared to be no reason whey this mark should be debarred by the provisions of Section 3.

Under Section 5(4)(a) - Passing Off - the Hearing Officer noted the opponents’ claims to use of their mark and on this basis their claim appeared reasonable. However, beyond the bare facts stated, the opponents had provided no supporting documentation such as invoices, advertisements, brochures etc to substantiate their claims and show how they used their mark. As the Hearing Officer noted, the burden of proof is on the opponents to substantiate their claim to have a reputation and goodwill in their mark and they had failed to do so.

Full decision O/233/98 38Kb