Trade mark decision

BL Number
Decision date
29 October 2001
Hearing Officer
Mr A James
Rajesh Talwar
Rare Limited
Sections 3(6), 5(3), 5(4)(a) & 56


Sections 3(6) - Opposition failed

Sections 5(3) - Opposition failed

Sections 5(4)(a) - Opposition failed

Sections 56 - Opposition failed

Points Of Interest

  • None.


The opponents opposition was based on their ownership of registrations in Class 9 for the marks RAREWARE and RAREWARE plus logo and claimed use of these marks together with the mark RARE.

The opponents case under Section 3(6) was that the applicants’ business consisted of a single retail outlet; therefore trade was likely to be local and for a restricted range of goods. The Hearing Officer considered these claims to be weak since an applicant files an application on the basis of future use rather than current use. The opponents thus failed on this ground.

Under Section 5(4)(a) - Passing Off - The Hearing Officer accepted that the opponents had a reputation in their RAREWARE marks in relation to computer and video games but that use claimed in relation to clothing was only use in a promotional sense and not a secondary trade in clothing. The opponents therefore failed on this ground because they had not established that they had a goodwill in relation to clothing and their reputation in relation to computer and video games did not extend to clothing.

Under Section 5(3) the Hearing Officer noted that the opponents had a registration in Class 9 for, inter alia, computer and video games and that they had a reputation in RAREWARE. However, he did not see that there would be any detriment to the opponents mark by the applicant’s use of his mark RARE in relation to clothing and no evidence had been filed to convince him that such use would be parasitic and take unfair advantage of the opponents mark.

As the opponents owned a registration of the mark RARE in the USA (a convention country) it was argued that the terms of Section 56 should be applied in their favour. However, the Hearing Officer found that in the UK RARE was known as the name of a company and that RAREWARE had the reputation for goods. Thus RARE was not entitled to protection in the UK as a well known mark.

Full decision O/470/01 PDF document32Kb