Trade mark decision

BL Number: O/424/02
Decision date: 17 October 2002
Hearing Officer: Mr M Knight
Mark: ELIZABETH EMANUEL
Classes: 03, 14, 18, 25
Applicant: Continental Shelf 128 Limited
Opponent: Elizabeth Florence Emanuel
Opposition: Sections 3(3)(b), 3(6) & 5(4)(a)

Result

Section 3(3)(b): - Opposition failed. Section 3(6): - Opposition failed. Section 5(4)(a): - Opposition failed.

Section 3(6): - Opposition failed.

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

Points Of Interest

1. Personal Goodwill: Where someone uses their personal name as a trade mark there can be no personal goodwill in the name as a separate entity from the trade mark.
2. Decision appealed to the Appointed Person. Request to refer appeal to the High Court refused. See (BL O/196/03).
3. Appointed Person decision 16 January 2004 (BL O/017/04). Reference to European Court of Justice.
4. Guidance of European Court of Justice [2006] ETMR 56.
5. Appointed Person decision dated 3 November 2006 (BL O/317/06). Hearing Officer’s decision confirmed.

Summary

The opponent in these proceedings commenced to design and trade in clothing under the name EMANUEL about 1977. A shop was opened in Chelsea in 1986 but due to the breakdown of her marriage the shop closed in 1990 and Ms Emanuel commenced to trade under her own name ELIZABETH EMANUEL and she registered that mark with a logo in 1994.

Later in 1996 she entered into a partnership with a firm named Hamlet and formed a new company EE PLC. The ELIZABETH EMANUEL mark together with certain other assets were transferred to the new company. Because of financial difficulties encountered by Hamlet, EE PLC was forced to find another backer and subsequently in September 1997 an agreement was entered into with a firm named Frostprint. The business of EE PLC together with the registered mark and goodwill in the business were transferred to Frostprint for the consideration of £65,000. At the same time Frostprint changed its name to Elizabeth Emanuel (International) Ltd.

In 1997 the registered mark ELIZABETH EMANUEL and logo was assigned to an associated firm named Oakridge who applied for the mark in suit in March 1998. In August 2000 the registered mark and the application were assigned to the current applicants Continental Shelf 128 Limited. Shortly after the 1997 agreement with Frostprint, Ms Emanuel left Elizabeth Emanuel International Ltd but that company continued to trade under the Elizabeth Emanuel name and the registered mark ELIZABETH EMANUEL logo.

In these proceedings it was accepted that Elizabeth Emanuel had an international reputation as a clothing designer following her design of the wedding gown for The Princess of Wales on her marriage to Prince Charles in the early 1980s. The Hearing Officer also accepted from the evidence that there had been a certain amount of deception and confusion of the public by the use of the mark ELIZABETH EMANUEL by the current owners in relation to clothing which had not in fact been designed by Ms Emanuel.

In relation to the ground under Section 3(3)(b) the Hearing Officer noted that the opponent had assigned her rights in the name ELIZABETH EMANUEL to the current applicants (or predecessors) and even though there was some deception of the public this was “lawful deception” and might occur for a short period until the public were alerted to the fact that Ms Emanuel was not associated with the current owners of the mark. The Hearing Officer did not accept that the current owners had added to the confusion by failing to highlight the fact that Ms Emanuel was no longer associated with themselves. The opponent failed on the Section 3(3)(b) ground.

The ground under Section 3(b) was on the basis of intention to use in relation to all the goods claimed. However, it was accepted that the pleadings were not clear as regards the opponent’s stance on this ground and, in any case, the Hearing Officer doubted if the opponent could have succeeded on this ground on the basis of the evidence before him and concessions made by Counsel at the hearing.

The opponent also failed in the ground under Section 5(4)(a) - Passing Off - since the Hearing Officer concluded that the current applicants own the goodwill in the mark applied for.

Full decision O/424/02 135Kb