Trade mark decision

BL Number: O/443/02
Decision date: 31 October 2002
Hearing Officer: Mr J MacGillivray
Mark: HERITAGE
Classes: 19
Applicant for Invalidity: Masterframe Windows Ltd
Registered Proprietor: Premdor Crosby Ltd
Ivalidity: Section 47(1) based on Section 3(1)(b), (c) & (d)

Result

Section 47(1) & Section 3(1)(b), (c) & (d): - Invalidity action failed.

Points Of Interest

See also BL O/443/02

Summary

The applicant for invalidity had applied for registration of the mark THE HERITAGE COLLECTION BY MASTERFRAME and the mark in suit had been raised as a citation by the examiner.

The applicant was of the opinion that HERITAGE was not a distinctive mark and thus applied for invalidation. In support of its claim the applicant carried out an internet search for the words HERITAGE WINDOWS which produced 234,000 hits, a great number from firms offering to supply traditional doors. A number of advertisements from magazines were also provided to show use of HERITAGE in relation to doors by third parties.

The applicant also provided as an exhibit, a list of nineteen firms in the field of construction and home improvement, who include the word HERITAGE in their company name.

Bearing in mind the dictionary references for HERITAGE eg "anything that has been transmitted from the past or handed down by tradition "the applicant believed that based on the information obtained from the internet, the mark HERITAGE had become customary in the current language in relation to doors and door products.

The Hearing Officer noted that the internet search had been carried out some time after the relevant date of November 1998; that much of the information related to use in the USA and that there was no independent or third party evidence filed to support the applicant's claims. As the Hearing Officer decided that HERITAGE was at best an indirect indication in relation to the kind, quality, purpose or other characteristic of the goods at issue, he concluded that the applicant failed under Section 3(1)(c). For the same reasons he decided that the applicant also failed under Section 3(1)(b). As regards Section 3(1)(d) the Hearing Officer did not accept that because a word is often used in company names it could not function as a trade mark. The application also failed on this ground.

Full decision O/443/02 19Kb