Trade mark decision
- BL Number
- Decision date
- 6 May 2004
- Hearing officer
- Dr W J Trott
- LE MANS
- 06, 07, 09, 12
- Le Mans Autoparts Limited
- Automobile Club De L’ouest De La France (A.C.O)
- Sections 3(1)(b) & (c), 3(3)(b), 5(2)(a), 5(3) & 5(4)(a)
Section 3(1)(b) & (c) - Opposition failed.
Section 3(3)(b) - Opposition failed.
Section 5(2)(a) - Opposition failed.
Section 5(3) - Opposition failed.
Section 5(4)(a) - Opposition failed.
Points Of Interest
- 1. The opponent appealed to the Appointed Person. In his decision dated 8 November 2004 (BL O/012/05) the Appointed Person found the mark LE MANS to be a "well known mark" and found in favour of the opponent under Sections 5(2)(a), 5(3) & 5(4)(a).
The opponent is the organiser of the LE MANS 24 HOUR car race which has been held at the town Le Mans in France from 1907. Various names have been used over the years but the Hearing Officer accepted as fact that the term LE MANS is well known in the UK as a reference to the well known car race at Le Mans. The opponent provided much evidence in an attempt to show ownership of the LE MANS trade mark but it was ill prepared, much of it dated after the relevant date and poorly focused and the Hearing Officer concluded that the opponent had little or no use of the mark LE MANS in the UK in relation to goods. However, they owned registrations in Class 3 for the marks LE MANS and device and 24 HEURES DU MANS in relation to preparations for the cleaning and care of motor vehicles.
The applicant disputed the opponent’s claims as to ownership of the mark LE MANS and claimed to have use of their mark in relation to a range of motor vehicle parts from 1990 onwards. The Hearing Officer accepted that they had established a reputation amongst its customer base at the relevant date.
Under Section 3(1)(b) and (c) the Hearing Officer accepted that Le Mans is well known as a geographical location because of the annual motor race but he noted that there was no indication that it was a base of manufacture for motor vehicle parts. He believed, therefore, that the mark in suit was acceptable in the prima facie, and even if wrong in this respect, that the mark could be accepted on the basis of the applicant’s use under the proviso to Section 3(1).
As regards Section 3(3)(b) the Hearing Officer concluded that this ground must fail as consumers could have no expectation, bearing in mind that Le Mans had no reputation as a source of manufacture of the goods at issue.
Under Section 5(2)(a) the Hearing Officer concluded that the registered marks were not identical to the mark applied for. Therefore, this ground failed at the outset.
In view of the lack of any reputation as a trade mark in relation to goods the Hearing Officer decided that the ground under Section 5(3) must fail for lack of reputation.
The last ground under Section 5(4)(a) – Passing Off – also failed. While the Hearing Officer accepted that the opponent had some reputation in the UK in relation to the organizing of the 24 HOURS LE MANS car race, their lack of any merchandising under the mark in the UK meant that there was unlikely to be any misrepresentation in relation to use of the mark LE MANS by the applicant.
Full decision O/130/04 300Kb