Trade mark decision

BL Number

O/336/02

Decision date

14 August 2002

Hearing Officer

Mr M Knight

Mark

POLICE PUBLIC CALL BOX

Classes

09, 16, 25, 41

Applicants

British Broadcasting Corporation

Opponents

The Metropolitan Police Authority

Opposition

Sections 3(1)(a), 3(3)(b), 3(4) & 3(6)

Result

Section 3(1)(a) - Opposition failed.

Section 3(3)(b) - Opposition failed.

Section 3(4) - Opposition failed.

Section 3(6) - Opposition failed.

Points Of Interest

• None

Summary

The opponents claimed that they first commenced to use their Telephone Box in 1929 and by 1953 there were 685 Police Telephone Boxes in London. Use was also made of the Telephone Boxes by provincial police forces. The opponents also claimed to have consented, or at least not objected, to the use of the Police Telephone Box by the BBC for use in the Dr Who programme where the Telephone Box was used in connection with the space travel machines knows as "The Tardis". Design and copyright rights were also claimed by the opponents.

The applicants stated that they had used the Public Telephone Box from 1963 onwards in relation to the Dr Who programme; that they never had any consent from the opponents; that no design or other rights appeared to be in existence and they disputed the opponents claim to have any rights outside their area of activity of offering a Police Service, when the application was filed on 1 July, 1996.

Under Section 3(1)(a) the Hearing Officer had little difficulty in concluding that the mark in suit was capable of functioning as a trade mark.

Under Section 3(3)(b) the Hearing Officer considered the matter on the basis that it is deceptiveness within the mark itself which is relevant under this Section. As he considered the mark in suit to be fanciful for the goods at issue he saw no likelihood of confusion or deception of the public.

The ground under Section 3(4) was dismissed as no evidence was filed to support claims made.

Under Section 3(6) the Hearing Officer believed that the opponents had no rights outside their field of activity in providing a police service. Thus there appeared to be no bad faith on the part of the applicants in applying for registration of the mark in suit in relation to the goods claimed.

Full decision O/336/02 73Kb