Trade mark decision

BL Number

O/162/98

Decision date

11 August 1998

Hearing officer

Mr S J Probert

Mark

MANHATTAN BAGEL

Classes

42

Applicants

Manhattan Bagel Company Inc

Opponents

New York Bagel Company Ltd.

Opposition

Section 5(4)(a)

Result

Section 5(4)(a) - Opposition failed

Points Of Interest

• "In assessing the opponent’s goodwill whether or not the opponent has consistently used a particular name or logo in the course of trade is not a significant factor."

Summary

The opposition was based on the opponents' use of and reputation in their mark NEW YORK BAGELS. Reviewing the evidence, the Hearing Officer concluded that the extent of the opponents’ prior use of their mark was not the deciding factor. He did not have to decide whether the opponent had an earlier right that would have succeeded in opposition under Section 11 of the old law, but whether the opponent would be able to prevent the applicants from using the mark in suit by virtue of the law of passing off; this did not directly protect trade marks but the goodwill residing in the business. The Hearing Officer concluded that the opponent had established the necessary goodwill and went on to consider the matter of misrepresentation. He did not consider that the mark applied for was likely to lead the public to conclude that the services offered by the applicant were connected in any way with the opponent. This effectively decided the matter.