Trade mark decision
- BL Number
- O/391/03
- Decision date
- 15 December 2003
- Hearing Officer
- Mr M Reynolds
- Mark
- NELLIE THE ELEPHANT
- Classes
- 41
- Registered Proprietor
- Animated Music Ltd
- Applicants for a declaration of invalidity
- Dash Music Co Limited
- Application for invalidation
- Sections 47(1) (Section 3(6)); 47 (2)(b) (Section 5(4)(b))
Result
Application for invalidation Section 47(1), citing Section 3(6), failed. Application for invalidation Section 47(2)(b), citing Section 5(4)(a), failed.
Points Of Interest
- 1. Copyright; song titles; substantial portion of the lyrics.
Summary
This was one of two related actions involving the same mark and the same parties, the other being a revocation action heard on the same day (see BL 0/392/03). In this action, the applicants alleged (i) that the mark was invalid having regard to their ownership of the copyright in the song “Nellie the Elephant” and (ii) that the application for registration had been made in bad faith and in the knowledge of the present applicants’ rights in the composition of that name. The Hearing Officer dealt with the copyright aspect first (Section 5(4)(b)).
Following a detailed review of the relevant law and the submissions made, the Hearing Officer concluded that no copyright existed in the song title "Nellie The Elephant". Because the matter had not been clearly foreshadowed in the pleadings he was inclined to reject the further argument that the title was also a substantial part of the lyrics, on that ground alone. However, he went on to find that the title was not in fact so substantial a part of the song as to justify a contrary finding. The Section 5(4)(b) ground he therefore dismissed.
The allegation of bad faith (Section 3(6)) was based on an agreement which had existed between the parties concerning use of the song (words and music) in a series of animated films to be produced by the registered proprietors. The Hearing Officer was not satisifed that registrations of the title as a trade mark had breached that agreement. This ground failed also.
Full decision O/391/03 
45Kb
