Trade mark decision

BL Number

O/188/98

Decision date

24 September 1998

Hearing officer

Mr A James

Mark

MAN O MAN

Classes

03

Applicant

Madgecourt Limited

Opponent

Pearson Television Limited, Grundy International Operations BV & Grundy International Operations Limited

Opposition

Sections 3(3), 3(6), 5(4)(a) & 56(1)

Result

Section 3(3) - Opposition failed.

Section 3(6) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Section 56(1) - Opposition failed.

Points Of Interest

• An application to file additional evidence at the hearing was refused.

Summary

The opponents opposition was essentially based on their ownership of the title of a television programme MAN O MAN which had been shown in a series of twelve programmes on ITV during the period 4 May-8 June 1996. The applicants applied for their mark on 6 July 1996.

Under the Paris Convention provisions (Section 56(1)) the Hearing Officer concluded that the opponents had not established that their mark MAN O MAN was “a well known mark” at the relevant date. Only twelve programmes had been shown on TV and while these programmes may have had a substantial audience no evidence had been filed from the public as to their knowledge of the mark. Additionally, the opponents had not shown that the mark was the property of a person entitled to claim protection under the Paris Convention.

Under Section 5(4)(a) - Passing Off - The Hearing Officer accepted that the opponents had some goodwill in their mark at the relevant date but because the respective fields of activity were far apart the Hearing Officer was unable to presume confusion in the absence of relevant evidence.

With regard to “bad faith” under Section 3(6) the Hearing Officer noted the applicants reason for adopting the mark. He accepted it only on the basis that the respective fields of activity are far apart. He also did not accept that the applicants claim was too broad.