Trade mark decision

BL Number

O/267/98

Decision date

17 December 1998

Hearing officer

Mr M Knight

Mark

800-FLOWERS

Classes

35

Applicant

1-800-Flowers Inc

Opponent

Phonenames Limited

Opposition

Sections 10, 11, 12(3) & 17 of the Trade Marks Act 1938 (as amended)

Result

Section 10 - Opposition failed

Section 11 - Opposition failed

Section 12(3) - Opposition failed

Section 17 & 68 - Opposition failed

Points Of Interest

• 1. During the course of the proceedings the applicants had claimed that the opponents were in breach of Section 28(b) of the 1938 Act in that they were acquiring marks from telephone companies with the intention to "traffic" in such marks. The Hearing Officer observed that this point had been addressed in the opponents evidence and he was satisfied that their operation was not in breach of Section 28(6).
• 2. This case was appealed to the High Court. (See 2000 FSR 697). In that decision Mr Justice Jacob decided that the mark in suit was not capable of distinguishing (Section 10) and that the opponents were also successful under Section 11 and under Section 17 - intention to use.
• 3. There was a further appeal to the Court of Appeal. Appeal dismissed. Cross appeal re costs allowed. See 2002 FSR 12.

Summary

The opponents had set up a business for promoting and marketing an alpha-numeric concept involving telephone numbers which spell out certain services or goods eg 0800 PLUMBERS. In this case they obtained the telephone number from British Telecom which equated to 0800 FLOWERS. This number was requested on 5 November 1993 and awarded on 27 November, 1993. The number was still owned by BT and in practice they could at any time withdraw it from the current party (the opponents) and award it to someone else.

The applicants indicated in their evidence that they trade widely in the USA under the mark in suit with annual turnover to June 1994 in excess of $80 million dollars. They claimed orders from the UK of over 5600 totalling some $430,000 dollars. Their application was filed on 13 February 1993 and an advertisement about the new service was placed in the Independent Newspaper on 2 November 1994.

Under Section 10 of the Act the Hearing Officer considered whether the applicants mark was capable of distinguishing the services of the applicants from those of others. In his view it did, as he considered that the mark represented something different from the exact telephone number and was merely an allusion to the services provided. Opposition failed on this ground.

Under Section 11 it was the opponents’ case that as they had been granted the telephone number 0800 2569377 (which equates to 0800 FLOWERS) there would be confusion if the applicants used their mark. However, the position had to be judged as at the date of application and at that date the opponents had not been granted use of the telephone number in question. The Section 11 ground must fail. In view of this decision under Section 11 the Section 12(3) ground also failed.

The opponents’ objection under Sections 17 and 68 was on two grounds. First as the opponents had been granted the relevant telephone number the applicants would be unable to use their mark. The Hearing Officer did not accept this. He noted that it might be more difficult for the applicants to use their mark but he believed that it could be used with another telephone number. The second leg "intention to use" was also based on the opponents’ ownership of the relevant telephone number but again the Hearing Officer was unconvinced as to the merits of the opponents case. Opposition failed on this ground.

In view of his decisions above and taking account of the evidence before him, the Hearing Officer decided that no exercise of discretion against the applicants was appropriate.