Trade mark decision

BL Number
Decision date
7 September 1999
Hearing Officer
Mr A James
Tara Jarmon
Genesco Inc
Sections 5(2), 5(4)(a) & 56(1)


Sections 5(2)(b) and 56: - Opposition failed.

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

Points Of Interest

  • 1. Goodwill produced in UK from retailing activity abroad - Observed that if every overseas retail outlet visited by UK residents acquired goodwill in the UK (with associated passing-off rights) in respect of the same or similar names, it would soon become hard to find a mark which could lawfully be used in the UK, at least for consumer goods. (Jian Tools case et al distinguished).


Opposition based on the opponent’s claim to goodwill in the UK under the trade mark JARMAN, derived from sales of relevant goods (notably shoes) to UK customers at its chain of retail shoe stores in the USA, and on the claim to that mark being well known in the UK.

The opponent’s case under Section 5(4)(a) was primarily based on evidence of sales in Florida to customers using VISA cards issued by UK banks, but the Hearing Officer found this to be inadequate for a number of reasons, notably because (a) the evidence covered a period after the relevant (priority) date, (b) it identified no UK customers or their banks and (c) it failed to identify the goods purchased. These deficiencies, in his view made it very unlikely that the opponent would succeed (on that evidence) in a passing-off action, and the opposition therefore failed on that ground.

Opposition under Section 5(2) also failed, the Hearing Officer finding briefly that the opponent came nowhere near supporting its claim that its mark was well known in the UK.

Full decision O/311/99 PDF document30Kb