Trade mark decision

BL Number

O/246/98

Decision date

27 November 1998

Hearing officer

Mr G Salthouse

Mark

WACKERS

Classes

28

Applicant

Marketing Bridge (Europe) Ltd

Opponents

Ball Inc

Opposition

Sections 3(6) & 5(4)(a)

Result

Section 3(6): - Opposition failed.

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

Points Of Interest

• 1. This decision was reported in [1999] RPC 453.

Summary

The opponents filed evidence to say that they had first commenced to use the mark WACKERS from 1993 and goods (a game known as “Pogs”) were sold in the USA through such companies as Walmart during 1994 and 1995. The goods were also exhibited at trade shows from 1993-1995 in Los Angeles, New York and Las Vegas. They also claimed to have been in active negotiations with a marketing company in London and provided samples to that company and a couple of others. The total value of goods provided prior to the relevant date was less than $2000 dollars.

The opponents also filed information from a special investigator who had been requested to investigate the applicants business. A Mrs Dowsett stated that she had contacted a Ms Pearce, a marketing assistant, who told her that Mr Mackay, a director of the applicants, visited many conferences and exhibitions around the world to obtain ideas for children’s toys etc and that he had seen the idea for WACKERS in the USA.

Mr Mackay filed evidence on behalf of the applicants. He stated that he had been employed by Allied Domecq for sixteen years. That company owns the brand name WACKY WAREHOUSE which is used for children’s play areas in public houses. When he formed his own company he worked with the originators of the WACKY WAREHOUSE concept, particularly in the area of developing new toys for such play areas. The name WACKERS was chosen as an apt name for a game consisting of one disc hitting another as it was easily associated with the name WACKY WAREHOUSE. A search had been carried out and the application for registration was filed.

Mr Mackay explained that he had been told about the game ‘Pogs’ by a Mr King, a representative of Big Joe Slammers, an American company.

As regards the investigators report Mr Mackay produced a written contemporaneous record of the conversation between Ms Dowsett and MsPearce and it did not support the allegations made by Ms Dowsett. Additionally he claimed that no-one from his company had visited America prior to 1996 and the name WACKERS was being used in proposals in February and March, 1995.

The Hearing Officer accepted the applicants version of events and concluded that the application had not been filed in bad faith. Opposition thus failed on this ground.

Under Section 5(4)(a) - Passing Off - the Hearing Officer concluded that that ground of opposition must fail because there was no proof that the applicants had any reputation or goodwill in the mark in the UK at the relevant date.