Trade mark decision

BL Number
O/236/01
Decision date
23 May 2001
Hearing Officer
Mr A James
Mark
DEVICE ONLY MARK
Classes
16, 25, 35, 40, 42
Applicant
Wayne Brown.
Opponent
Turner Entertainment Co
Opposition
Sections 3(6), 5(2)(b), 5(4)(a) & (b) & 32(3)

Result

Section 5(4)(b): - Opposition successful.

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

Section 3(6): - Opposition failed.

Section 5(2)(b): - Opposition failed.

Section 5(3): - Opposition failed.

Section 32(3): - Opposition failed.

Points Of Interest

  • Copyright: This is a useful case in that the Hearing Officer has carefully reviewed the law in this area and established a number of criteria to be applied or considered.

Summary

The opponents opposition was based on their ownership of rights in the cartoon characters Tom & Jerry which were created in the USA in 1940; use of marks based on such characters and registrations in Classes 16 and 25.

The Hearing Officer considered that the copyright issue was the most relevant ground of opposition and dealt with that ground first. He accepted that at the relevant date - 6 November 1996 - the opponents had a relevant copyright in the UK in the characters Tom & Jerry. The evidence filed in the proceedings established that the applicant had used an earlier cat device which was very similar to the Tom cartoon character and the mark at issue here was simply a cropped version of the earlier mark. Thus if the earlier mark infringed the opponents copyright then it must follow that the mark now applied for was indirectly copied from the same drawing. The Hearing Officer compared the respective representations in some detail and concluded that the applicant had indeed copied a significant number of features. It thus followed that opposition based on Section 5(4)(b) succeeded.

Under Section 5(4)(a) - Passing Off - the Hearing Officer noted that different considerations applied since the respective marks had to be compared as wholes. In this connection the applicant’s cropped version of a cats head had to be compared with the Tom & Jerry mark in totality and the respective goods and services were some distance apart. In these circumstances the Hearing Officer decided that the opponents must fail on this ground. The Hearing Officer reached a similar decision under Sections 5(2)(b) and 5(3) where he again found that the respective marks were not similar when compared as wholes.

Under Section 3(6) - Bad Faith - where the applicant’s intention to use his mark in respect of all the goods and services claimed was questioned, the Hearing Officer noted that the applicant’s evidence in disputing this ground was modest but he felt that the opponents had not made out their grounds to any significant extent. As the burden of proof rested with the opponents he considered it appropriate to find for the applicant.

Full decision O/236/01 PDF document76Kb