Trade mark decision

BL Number
O/348/01
Decision date
14 August 2001
Hearing Officer
Mr M Knight
Mark
FLYING SCOTSMAN
Classes
33
Registered Proprietor
Director of Passenger Rail Franchising
Applicant for Revocation
Flying Scotsman Railways Limited
Revocation
Section 46

Result

Section 46 - Revocation successful

Points Of Interest

  • (2). Infringing Use: The Hearing Officer noted that the registered proprietors claimed use of their mark before they in fact owned it. A finding of genuine use would also have meant a finding of infringing use.
  • (1). The applicants had, in effect, filed no evidence to support their allegation of non-use. However, the Hearing Officer decided that the onus is on a registered proprietor (Section 100) to show what use he has made of his mark if a challenge is made. A claim to have such an application deemed abandoned would have to be carefully considered : would include the nature of the case, the registered proprietors evidence and the timing of any such request.

Summary

The registered proprietors claimed to have used the mark FLYING SCOTSMAN in relation to train services between London and Scotland, including the provision of food and drink, since 1994. However, the applicants filed evidence to establish that the mark was not transferred into the ownership of the present proprietors until 1996.

The Hearing Officer considered the claims to use of the registered mark but concluded that use only on price lists, brochures etc was insufficient to support a claim to genuine use since there was in fact no evidence to show that the mark was used on the relevant goods or acted as a badge of origin. Secondly the mark as used consisted of the words THE FLYING SCOTSMAN surrounding a very prominent thistle device. Following the guidance set down in the ELLE case, the Hearing Officer decided that the mark as used, would not in fact protect the registration which consisted solely of the words FLYING SCOTSMAN.

Full decision O/348/01 PDF document52Kb