Trade mark decision

BL Number

O/317/04

Decision date

15 October 2004

Appointed Person

Mr Richard Arnold QC

Mark

LORNA MORGAN

Classes

09, 16, 25, 35, 41, 42

Applicant/Respondent

Oska's Ltd

Opponent/Appellant

Morgan SA

Appeal to the Appointed Person against the decision of the Registrar’s Hearing Officer in opposition proceedings.

Result

Appeal allowed; application refused in respect of its Class 25 specification.

Points Of Interest

• 1. Surnames; registrability.

Summary

At first instance (see BL O/005/04) the Hearing Officer had found the opposition to have failed under Sections 5(2)(b) and 5(4)(a). The opponent appealed to the Appointed Person against these findings. The Appointed Person, however, made it clear that he was confining his review to the Section 5(2)(b) objection.

Following an exhaustive review of the present state of the law in relation to the registrability of surnames, particularly in the light of the judgement of the ECJ in Nichols Plc v Registrar of Trade Mark [2004] ETMR 48, the Appointed Person identified a number of flaws in the Hearing Officer’s decision. He had made no finding as to the identity of the average consumer or the level of care that would be exercised; he had not correctly addressed the impact of the distinctive character of MORGAN; he had not considered the effect of imperfect recollection and he had wrongly applied the decision in the LAURA case in that in this case the sole and dominant component of the mark was MORGAN.

In the result; the Appointed Person found that the opponent had established a likelihood of confusion within the meaning of Section 5(2)(b). The appeal was allowed.

Full decision O/317/04 94Kb