Trade mark decision

BL Number

O/471/00

Decision date

6 November 2000

Appointed Person

Mr S Thorley QC

Mark

WANNABEE

Classes

03

Applicants

Scentura Creations Ltd

Opponents

Patrick Cox Designs Ltd

Opposition

Sections 3(6), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 3(6) - Leave to add this ground refused

Section 5(2)(b) - Opposition dismissed

Section 5(3) - Opposition dismissed

Section 5(4)(a) - Opposition dismissed

Points Of Interest

• Raising new issues on appeal - Save only in the most unusual cases, notably where additional material comes to light which could not be put before the Registrar, it is undesirable that new issues should be raised on appeal. Non-use of mark - during period in which it is subject to opposition does not support allegation of bad faith.

Summary

Hearing Officer's decision (O/156/00) on all grounds under Section 5 upheld, and Opponent refused leave to add allegation of bad faith under Section 3(6), which was not argued before the Hearing Officer.

In his approach under Section 5(4)(a), the Appointed Person confirmed that this postulates a hypothetical passing off action commenced as of the date of application, and that it is reputation at that date that has to be assessed, and the question of misrepresentation has to be approached on the basis of a notional and fair use of the mark in suit. It was wrong in law for the Opponent to seek to adduce evidence to show how the reputation would have developed by the time the mark was used. If use of the applicants mark was delayed, it was always open to the Opponent to bring a later passing off action if the use was not the same as the assumed notional and fair use and/or their reputation grew in the meantime.

Although he departed from the Hearing Officer in assessing some of the Opponent's evidence, notably that assessed by the latter as hearsay, he was nevertheless wholly unpersuaded that the Hearing Officer's conclusion in the matter of the Opponent's reputation was in anyway at fault. He also concluded that the Hearing Officer had rightly distinguished the present case from the cited authority (The Eternity case) in finding no likelihood of confusion.

The Hearing Officer's finding under Sections 5(2)(b) and 5(3) were upheld with only brief consideration deemed necessary in each case.

Full decision O/471/00 41Kb