Trade mark decision

BL Number
O/393/02
Decision date
27 September 2002
Hearing Officer
Mr M Reynolds
Mark
EATALIA
Classes
29, 30
Applicant
Luca Casalena
Opponent
Paul Jonathan Bendit
Opposition
Sections 3(6) & 5(4)(a)* (*other grounds were cited under various provisions of Section 3 but were not pursued)

Result

Section 3(6) - Opposition failed.

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

Points Of Interest

  • 1. Bad faith: bona fide intention to use.
  • 2. Bad faith: there are no specific requirements relating to the nature and extent of searches that need to be conducted prior to the filing of a trade mark application.

Summary

Dealing with a preliminary point the Hearing Officer was emphatically of the view that the ‘overblown claims’ made by or on behalf of the applicant in ‘preliminary skirmishes’ prior to the launch of formal proceedings should not cast doubt on the evidence filed subsequently.

Under Section 3(6), the opponent alleged: i) that the applicant did not have a bona fide intention to use the mark and ii) the applicant knew of the opponent’s mark at the date of application. The Hearing Officer found under i) that on the material before him the opponent had failed to make out a prima facie case. Under ii) the Hearing Officer noted that the opponent’s case was heavily reliant on establishing that the applicant’s enquiries and searches prior to application would have brought to light the existence of the opponent’s business, particularly by use of the internet. Again the Hearing Officer found on the basis of the evidence before him, that the opponent had not made out a prima facie case.

Under Section 5(4)(a) the Hearing Officer found that the marks were closely similar. The opponent’s goodwill at the relevant date "may not have been extensive but it existed", he decided. ‘Not without hesitation’, he concluded that ‘certain deficiencies in the opponent’s evidence’ should not obscure the fact that the evidence as a whole pointed to goodwill subsisting in the opponent’s EATALIA DIRECT logo, at the relevant date. The opposition succeeded accordingly.

Full decision O/393/02 PDF document91Kb