Trade mark decision

BL Number

O/192/99

Decision date

8 July 1999

Hearing officer

Mr M Knight

Mark

THOMAS COOK THE AUSTRALIAN ADVENTURE CLOTHING COMPANY

Classes

25

Proprietor

Thomas Cook Boot & Clothing Co Pty Ltd

Applicants for Declaration of Invalidity

The Thomas Cook Group Ltd

Invalidity

Section 47(2), Sections 5(2)(b), 5(3) & 5(4)(a) & 5(4)(b) & Section 56

Result

Section 47(2) - application dismissed on all grounds

Section 47(2) - application dismissed on all grounds

Points Of Interest

• Section 5(4)(b) - Observed : that a local right protected under Section 11(3) may stand to be considered under Section 5(4)(b) but such a right could not prevent acceptance (or continuation) of a registration of a mark used or intended to be nationally.

Summary

Application based on applicant's claim to reputation and goodwill in its trade mark THOMAS COOK for which it claimed entitlement to protection under the Paris Convention as a well known mark (per Section 56). Since the mark in suit was registered under the Trade Marks Act 1938 (as amended), the Hearing Officer found at the outset that the proprietor had no case to answer under Section 5(3), this being an excluded ground under Section 47 in respect of 1938 Act registrations by virtue of Schedule 3 , paragraph 18(2), of the 1994 Act.

In regard to the applicant's case under Section 56, the Hearing Officer found that this failed for want of evidence that the applicant was in fact a national of a convention country (the UK being excluded per Section 55(1)(b)). Furthermore, the applicant failed to show that there was identity or even similarity of goods or services traded under the respective marks, and in any case the proprietor was entitled (per Section 56(3)) to continue what the Hearing Officer accepted was bona fide use of the mark in suit prior to 31 October 1994, ie the commencement date of Section 56(2). The provisions of Section 5(2) did not therefore come with play.

As to the applicant's case under Section 5(4)(a), the Hearing Officer concluded that the applicant's goodwill and reputation in the mark THOMAS COOK was confined very much to travel services, notwithstanding use of the mark on staff clothing and promotional "giveaways", and he found no significant overlap with the proprietor's goods (clothing, shoes etc) and therefore no misrepresentation or damage. The applicant's case under Section 5(4)(b) also failed, for want of evidence of other relevant rights (eg unregistered trade marks) owned by the applicant.