Trade mark decision

BL Number

O/290/07

Decision date

2 October 2007

Hearing Officer

Mr D Landau

Mark

TRAVELOCITY INTERNATIONAL MAGAZINE

Classes

16, 35, 41

Applicant

Francisco Toju Da’silva

Opponent

Travelocity.com LP

Opposition

Sections 3(6), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 3(6): Opposition successful. Section 5(3): Opposition failed. Section 5(2)(b) & 5(4)(a): Not considered.

Points Of Interest

• The fact that the applicant only currently trades in Africa is not relevant to this decision which involves a UK application.

Summary

The opponent is the owner of the registered CTM mark TRAVELOCITY in classes 9, 38 and 35.

The opponent filed details of use of its mark from 12 March 1996 when its travel service website was launched. Use in the UK commenced in 1997 and travel transactions processed through the UK office increased from £27m in 2002 to £67m in 2005. Up until 2000 the maximum budget for promotion was £500k but in the period to 31 December 2004 £17.5m was spent on promotion with another £3m paid to search engines such as Google.

The applicant stated that TRAVELOCITY INTERNATIONAL MAGAZINE was first published in 2003 and may have been published in 2004. A website under the name www.travelocity-magazine.com <http://www.travelocity-magazine.com> was set up but the applicant says it has been taken down to re-build. The applicant claims that currently it only trades in Africa.

Under Section 3(6) the Hearing Officer noted that the relevant date was the 30 June 2005, the date of filing of the mark in suit. At this date the Hearing Officer accepted that the opponent had a significant reputation and goodwill in its mark TRAVELOCITY. He also noted that the opponent made a definite claim in its opposition that the applicant was aware of its substantial goodwill and reputation when he applied for the mark in suit. The applicant did not dispute this claim in his evidence. The Hearing Officer went on to conclude that the opponent was successful on the 3(6) ground.

Because of his finding under Section 3(6) the Hearing Officer did not consider the other grounds. He observed, however that the ground under Section 5(3) must fail because the registered mark relied upon is a CTM and the opponent had only proved a reputation and goodwill in the UK. The opponent, however, had a goodwill and reputation to support its Section 5(4)(a) ground.

Full decision O/290/07 67Kb