Trade mark decision
- BL Number
- O/252/99
- Decision date
- 21 July 1999
- Hearing Officer
- Mr A James
- Mark
- TOP GEAR
- Classes
- 09
- Applicant
- Kemco America Limited
- Opponent
- British Broadcasting Corporation
- Opposition
- Trade Marks Act 1938, Sections: 11, 12, 17(1) & 17(2)
Result
Section 11 - Opposition successful
Section 12 - Opposition failed
Section 17(1) - Opposition failed
Section 17(2) - Not applicable
Points Of Interest
- Honest concurrent use.
Summary
The opponents based the opposition on their television programme TOP GEAR and related registrations.
The Hearing Officer dealt, firstly, with the question of proprietorship under Section 17(1). He saw no evidence suggesting that the opponents had goodwill in a business supplying or licensing computer games under the name TOP GEAR, and hence he could see no reason why the applicants could not make a valid claim to be proprietors of the mark in respect of the goods specified. The opposition under Section 17(1) failed accordingly.
Under Section 12(1) in respect of one registration he found that the goods were neither the same nor of the same description, and he went on to consider the services covered by a second registration. These, he decided were not 'associated'; the opposition under Section 12(1) failed accordingly.
After reviewing the evidence relating to the history and manner of the opponents' use, however, the Hearing Officer found that the opposition succeeded under Section 11, even taking into account the applicants’ claim of honest concurrent use. As the opposition under Section 11 had succeeded, no question of discretion under Section 17(2) could arise.
Full decision O/252/99 
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