Trade mark decision

BL Number

O/167/98

Decision date

17 August 1998

Hearing officer

Mr M Knight

Mark

CLUB EUROPE & DEVICE

Classes

39, 42

Applicant

Club Europe Holidays Ltd

Opponent

British Airways Plc

Opposition

Sections 11, 12(1) & 17 of the Trade Marks Act 1938

Result

Section 11 - Opposition partially successful.

Section 12(1) - Opposition partially successful.

Section 17 - Opposition partially successful.

Points Of Interest

• The applicants appealed to the High Court. (See 2000 RPC 329). The High Court decision effectively overturned the Hearing Officer’s decision in that it allowed the applicants applications to proceed subject to an exclusion from their specifications, of services relating to airline services.

Summary

The opponents had started to use the mark CLUB in 1978 and in 1987 CLUB WORLD and CLUB EUROPE in relation to airline services. Efforts were made to register the mark CLUB but it was deemed unregistrable (see 1994 RPC 527) but CLUB WORLD was registered on 27 March 1987 in Class 39 and on 28 November 1991 in Class 42. The opponents claimed extensive use of their mark and it was accepted that they had a significant reputation in their CLUB marks in relation to airline services.

The applicants had commenced to use their CLUB EUROPE mark in 1980 and use has continued from that time onwards in relation to the arranging of tours for schools, concert groups etc. Their applications to register the mark in suit were filed on 12 October 1988 under Nos 1360373 and 1360379. There had been correspondence between the parties when the opponents adopted their CLUB EUROPE mark in 1987 but at that time the opponents thought there was no risk of confusion.

Under Section 17 the Hearing Officer accepted that the applicants were the first party to use the mark CLUB EUROPE but he determined that they could only claim proprietorship in respect of the services on which they had used their mark, in particular in relation to the arranging of tours for schools, educational establishments and concert groups. In the Hearing Officer’s view the applicants could not claim to be the proprietor in respect of the other services claimed in Classes 39 and 42.

Under Section 12(1) the Hearing Officer took into account the opponents’ registrations of CLUB WORLD in Classes 39 and 42. He determined that the respective services were the same or of the same description and went on to compare the respective marks CLUB EUROPE and device and CLUB WORLD. As both EUROPE and WORLD are descriptive terms in relation to geographic locations the Hearing Officer decided that the marks were confusingly similar and that opposition under Section 12 succeeded.

In view of his finding under Section 12(1) the Hearing Officer decided that in respect of services claimed by the applicants in their applications, which went beyond their actual use at the relevant date, then the opposition under Section 11 succeeded in respect of such services.

In view of the applicants first use, their applications were allowed to proceed for restricted specifications.