Trade mark decision

BL Number

O/250/98

Decision date

30 November 1998

Hearing Officer

Mr M Reynolds

Mark

MISSING IMPOSSIBLE

Classes

09, 41

Applicant

Missing Impossible Ltd

Opponent

Paramount Pictures Corporation

Opposition

Sections 3(6), 5(4)(a) & Section 56(1) & 5(2)

Result

Section 5(4)(a) - Opposition failed

Section 56(1) & 5(2) - Opposition failed

Section 3(6) - Opposition partially successful

Points Of Interest

• None

Summary

The opponents opposition was based on their ownership of the mark MISSION IMPOSSIBLE which was first used in relation to a television series of that name which was first broadcast in the USA in 1966. Broadcasts by the BBC took place in the early 1970's with repeats between 1986 and 1988. A second series was screened by Channel 4 during the period October 1995 and September 1996. In 1996 the movie MISSION IMPOSSIBLE was released in the USA, UK and many other countries. There was also some merchandising but sales before the relevant date, 6 February 1996, were very modest.

Under Section 5(4)(a) - Passing Off - The Hearing Officer was unable to conclude that the opponents had established the necessary reputation on the basis of the television series and the other evidence filed added little of consequence. In passing the Hearing Officer compared the respective marks and came to the conclusion that they were confusingly similar.

With regard to their grounds of opposition based on the Paris Convention, Section 56, the Hearing Officer was unable to conclude that the opponents had proved that they were the owners of a well known mark at the relevant date. Their opposition therefore failed on this ground.

As regards the grounds of opposition under Section 3(6) of the act the Hearing Officer found that the opponents had not substantiated their claim that the applicants had adopted their mark in bad faith. However, with regard to intention to use, he noted the applicants failure to rebut the opponents claim and also their concession that they intended to use their mark in relation to goods for use in sports training. The Hearing Officer restricted the specifications in Classes 9 and 41 accordingly.

Full decision O/250/98 29Kb