Trade mark decision

BL Number
Decision date
23 September 2002
Hearing Officer
Mr G Salthouse
35, 42
Yellow Submarine Promotional Marketing Consultants Ltd
Subafilms Limited
Sections 3(6), 5(2)(b), 5(3), 5(4)(a) & 5(4)(b)


Section 3(6): - Opposition failed.

Section 5(2)(b): - Opposition partially successful.

Section 5(3): - Opposition failed.

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

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

Points Of Interest

  • Review of Copyright criteria of interest.


The opponents opposition was based on their ownership of the mark YELLOW SUBMARINE and device registered in a range of classes including Classes 16 and 41. The opponents claimed use of the mark YELLOW SUBMARINE as the name of a record album featuring songs by the Beatles Group and a motion picture with the same title. A claim was also made about the appointment of licensees in recent years and the merchandising of other goods but no specific evidence was filed to support such claims

The applicants also filed details of use dating back to 1993 (their application was filed in 1999) particularly in relation to marketing and promotion. No evidence was filed to support the services listed in their Class 42 application.

Under Section 3(6) the opponents filed no evidence to support the stance taken in their ground of opposition. At the hearing they attempted to change the nature of the attack but the Hearing Officer refused such submissions. Opposition failed on this ground.

Under Section 5(2)(b) the Hearing Officer had no difficulty in concluding that the respective marks were very similar and went on to compare the respective goods and services. He concluded that the applicants services in Class 42 were similar to the opponents' registered services in Class 41 but that their Class 35 services were not similar to the goods and services of the opponents in Classes 16 and 41. Opposition thus succeeded in part on this ground.

Because of the limited nature of the opponents reputation in their mark (essentially records and films) the Hearing Officer concluded that they must fail in their grounds of opposition under Sections 5(3) and 5(4)(a).

Under Section 5(4)(b) where the point at issue was a claim to copyright in respect of the respective devices, the Hearing Officer decided that the devices were too different for there to be any likelihood of the opponents succeeding on this ground. However, he carried out a detailed review of the law relating to copyright which is of interest.

Full decision O/382/02 PDF document118Kb