Trade mark decision

BL Number: O/332/07
Decision date: 9 November 2007
Hearing Officer: Mr M Foley
Mark: KEBABISH ORIGINAL EXPRESS Series of 11 Marks
Classes: 43
Applicants: Mr Iftikhar Ahmed Kahn & Mr Amjad Ali Khan
Opponent: Mr Khawaja Mohammed Shafique
Opposition: Section 5(4)(a)

Result

Section 5(4)(a): Opposition successful.

Points Of Interest

Honest concurrent use not an issue as little or no evidence or concurrent use in the separate localities.

Summary

The opponent claimed to have used the mark KABABISH in relation to a restaurant which he opened in Birmingham in 1983. A second restaurant was opened in the same area in 1987 and a third in 1990. The third restaurant closed n 1997. Turnover figures from 1997 onwards was provided together with advertising and promotion expenditure. In later years it would appear that knowledge of the name spread outwards from the Birmingham area.

One of the applicants stated that he based his KEBABISH mark on the word KEBAB and that he commenced use in 1986. The first restaurants under the KEBABISH opened in Southall in 1986 and was sold quite quickly but it was claimed that it continued to trade under the name. A second restaurant traded under the name from 1986 to 1989 and was then sold with the reputation and goodwill. In 1991 the current applicants formed a partnership and opened a restaurant in East London under the KEBABISH name. The name was registered as a business name in 1992 and later as a trade mark in May 2000 under the style KEBABISH ORIGINAL.

Since 1991 it would appear that a number of restaurants under the name KEBABISH, in some cases with variations, have been opened in London and the name has also been franchised throughout the UK including Birmingham, but evidence of this latter activity is not well documented or clearly explained.

As regards the Section 5(4)(a) ground of opposition the Hearing Officer noted that the respective marks were very similar and that the opponent was the senior user. Thus while the applicants may have established a goodwill in a distinct geographical area the granting of a national monopoly would move their rights into conflict in the geographical area where the opponent is the senior user. The applicants use would, therefore, constitute passing off and would lead to misrepresentation and damage. Opposition thus succeeded.

Full decision O/332/07 74Kb