Trade mark decision

BL Number

O/057/04

Decision date

2 March 2004

Hearing officer

Mr M Reynolds

Mark

WEST HAM UNITED FOOTBALL CLUB

Classes

14, 16, 18, 20, 24, 25, 27, 28, 38

Applicant

West Ham United Football Club Plc

Opponent

Patricia Hard O’Connell & Michael O’Connell

Opposition

Sections 3(1)(b); 3(1)(c); 3(6); 5(4)(a) & 41(2)

Result

Section 3(1)(b) - Opposition partially successful

Section 3(1)(c) - Opposition partially successful

Section 3(6) - Opposition failed

Section 5(4)(a) - Opposition failed

Section 41(2) - Opposition partially successful

Points Of Interest

• 1. Geographic indications
• 2. Marks indicating subject matter
• 3. Section 41(2); marks constituting a series

Summary

The application specified an extensive range of goods and services. Under Section 3(1) the opponents contended that the marks served in trade to indicate a geographical origin or association; also, they would serve only to indicate, as a badge of allegiance, the nature of the goods. Under Section 3(6) they alleged that the applicants had no intention of using the marks in a trade mark sense. The opponents also contended that the marks did not constitute a series (Section 41(2) and finally, that the application should be refused under Section 5(4)(a) in view of the opponents’ use of the mark WEST HAM by O’CONNELL.

In the result, the Hearing Officer upheld the Section 3(1) objection in relation to the mark WEST HAM, in respect of some of the goods specified ("newspapers, printed matter"); and it appeared to be entirely descriptive of the subject matter of "books, photographs, prints and pictures", which might perhaps be of the area concerned.

Turning to the "badge of allegiance" point, the Hearing Officer found the marks to be lacking in distinctive character in respect of a few of the goods specified, as they would serve only to indicate the subject matter.

The objection under Section 3(6) was twofold:

there was no intention to use the marks over the whole range of goods/services specified (despite the extensive range, this was no more than an allegation) and

the marks would be used with other distinctive elements. The Hearing Officer found no support for this allegation in the papers before him, and it was not, in any case, a valid basis for an objection.

The Section 5(4)(a) objection was not supported by any evidence of a protectable goodwill, and hence was dismissed.

Finally, the Hearing Officer found that the mark WEST HAM was not a valid member of the series; the others being "football club" marks. In doing so he accepted that a 'series objection' could be validly raised in opposition proceedings.

The applicants were given time to amend their application either by the deletion of WEST HAM, or by the deletion of the other six marks. They were also given time to amend their specification in the light of the findings under Section 3(1).

In view of the limited extent of the opponents’ success the Hearing Officer made an award of costs to the applicants reflecting this.