Trade mark decision

BL Number

O/316/02

Decision date

2 August 2002

Hearing Officer

Mr S P Rowan

Mark

CHINA WHITE

Classes

32, 33

Applicants

Karl Harrison

Opponents

Teton Valley Trading Company Ltd

Opposition

Sections 5(4)(a) & 3(6)

Result

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

Section 3(6): - Opposition successful.

Points Of Interest

• 1. See summary.
• 2. Two preliminary hearings in these proceedings on 5 December 2001 and 8 February 2002 (BL O/054/02).

Summary

The opponents operated a nightclub under the name CHINAWHITE. The property had been acquired in early 1998 and building renovations were carried out in the autumn. The Club commenced business in early November 1998. In October 1998 the bar manager, a Mr Rymer and his assistant a MrArnaud de Fort had been instructed to develop a recipe for a cocktail to be called CHINAWHITE. A suitable drink was created by December 1998 and extensive use of the mark in relation to this cocktail was claimed for the period December 1998 to March 1999 when the application in suit was filed by the applicant. A confidential agreement relating to the recipe for the CHINAWHITE cocktail was signed by Mr Rymer, Mr de Fort and other bar staff.

In relation to the Section 5(4)(a) ground - Passing Off - the applicant relied on the defence - ex turpi causa non oritur actio - (an action cannot be founded on a base cause). The applicant claimed that because the name CHINAWHITE is a known term for Heroin (an illegal substance) the opponents were encouraging the public to take such a substance by the use of that name for their nightclub and also the way in which their nightclub premises were decorated. The opponents responded by saying that they had an active policy in preventing drug use and its licence has been renewed three times without objection from the council or the police. Having considered the matter carefully the Hearing Officer concluded that there was no evidence of criminal activity on the part of the opponents and he did not consider that use of the name CHINAWHITE for a nightclub was immoral or encouraged immoral conduct. The applicant’s defence thus failed on this ground.

In relation to the opponents use and reputation under Section 5(4)(a), the Hearing Officer accepted that the name of the club CHINAWHITE had been widely publicised and was probably well known at the relevant date. However, there was little evidence to suggest any significant reputation in the name in relation to cocktails or drinks generally and no evidence had been filed to show a definitive link between nightclubs and the trade in alcoholic beverages. On the basis of the facts before him the Hearing Officer decided that there was unlikely to be any misrepresentation if the applicant used his mark in relation to alcoholic beverages and thus the opponents failed on this ground.

Under Section 3(6) the evidence showed that Mr Rymer had spoken to Mr Harrison (the applicant) about his work in developing a recipe for a new cocktail to be called CHINAWHITE. Subsequently a new company was formed with Mr White and Mr Rymer as co-directors. (Mr Rymer is now only a consultant). Mr Harrison subsequently applied for registration of the mark in his own name in March 1999.

On the basis of the evidence before him the Hearing Officer accepted that Mr Harrision was under the impression that Mr Rymer was the sole proprietor of the drink CHINAWHITE but he knew Mr Rymer worked as head barman at the CHINAWHITE nightclub and that a cocktail under that name would be served at the club. When he filed his application for registration in Classes 32 and 33, he made no application in Class 42 because of his knowledge of the existence of the opponents club.

As regards Mr Rymer, the Hearing Officer noted that the development of a recipe for the new cocktail was a team effort and Mr Rymer did not own it; also there was a confidentially agreement in existence in relation to the recipe.

Taking an overall view of the situation the Hearing Officer concluded that being aware of the facts set down above, Mr Harrison as a reasonably informed businessman have made further enquiries before filing his application. He should not have "deliberately not asked questions" and a search of the Companies Register and Trade Marks Register was insufficient. A finding that the application had been made in bad faith meant the opponents were successful on this ground under Section 3(6).

Full decision O/316/02 77Kb