Trade mark decision

BL Number
O/547/01
Decision date
7 December 2001
Hearing Officer
Mr M Knight
Mark
DU PONT
Classes
25
Applicant
E.I. Du Pont De Nemours & Company
Opponent
S T Dupont
Opposition
Sections 9, 10, 11 & 12 of the Trade Marks Act 1938 (as amended)

Result

Sections 9 & 10 - Opposition failed

Section 11 - Opposition failed.

Section 12: - Opposition failed.

Points Of Interest

  • 1. The opponents appealed this decision to the High Court. In his decision dated 22 November 2002 Mr Justice Neuberger allowed the opponents to amend their grounds under Sections 9 and 10 of the Act to include an objection based on the fact that DU PONT is a common French surname. He also found the opponents successful under Section 11 (Case No HC/2002/APP/0083). See also associated decisions BL O/546/01 (1994 Act Case) and BL O/548/01 (1938 Act Case).

Summary

The opponents opposition under Sections 9 and 10 of the Act was based on a claim to use of their mark S T Dupont for many years in relation to a wide range of goods including goods of the same description. Thus, in their view, the applicants mark was neither adapted or capable of distinguishing. Under Section 12 a number of prior registered marks were listed but this list was later abandoned and the objection on this ground was based on a later registered mark consisting of the signature S T Dupont in respect of a range of identical and similar goods in Class 25. The objection under Section 11 was based on a claim to use of the mark S T Dupont for about one year prior to the date of application of the mark in suit.

The applicants also filed details of use together with a claim that the mark had been used in relation to articles of clothing from 1963 with turnover in 1993 amounting to over £30m and promotions expenditure of some £2m. In use, however, the DU PONT mark was used to indicate origin of the materials from which the clothing was made rather than origin of the clothing per se. In the proceedings the Hearing Officer did not consider that this use assisted the applicants as the use of the DU PONT mark was at best ancillary and other marks were used to indicate origin of articles of clothing.

At the hearing the opponents sought to raise new grounds of objection under Sections 9 and 10 on the basis that DU PONT was a common French surname. The Hearing Officer refused to allow this new ground to be pleaded because it had been raised so late in the proceedings. The Hearing might have to be adjourned to allow the applicants an opportunity to meet this new objection and because the opponents had been professionally represented from the commencement of the proceedings. As noted above a new registration was allowed to be pleaded under Section 12 of the Act.

As the initial ground of objection under Sections 9 and 10 of the Act had no merit, that ground was not pursued before the Hearing officer and was dismissed.

With regard to the ground under Section 12 of the Act the registered mark relied upon by the opponents had been applied for after the date of application of the mark in suit. It was not, therefore, a prior right and despite extensive arguments by the opponents counsel that the objection should be given due weight the Hearing Officer decided that this ground of opposition could not succeed.

Finally in relation to the ground under Section 11 the Hearing Officer noted that the opponents evidence of use prior to the relevant date was modest; that the brochures submitted were undated or dated after the relevant date and the invoices filed were all dated after the relevant date. The Hearing Officer had no evidence before him as regards the style of use eg in the script style as shown in the brochures ( S T Dupont) or in the signature form as registered under mark No 1571156 (the subject of the objection under Section 12). The Hearing Officer accepted that if the script version had been used it was a similar mark to the applicants mark. If the signature mark had been used it was not similar. In view of this lack of clarity the Hearing Officer decided the opponents failed on the Section 11 ground.

Full decision O/547/01 PDF document33Kb