Freely Available British and Irish Public Legal Information
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> JANE AUSTEN (Trade Mark: Opposition) [1999] UKIntelP o19899 (12 July 1999)
URL: http://www.bailii.org/uk/cases/UKIntelP/1999/o19899.html
Cite as: [1999] UKIntelP o19899
[New search] [Printable PDF version] [Help]
JANE AUSTEN (Trade Mark: Opposition) [1999] UKIntelP o19899 (12 July 1999)
For the whole decision click here: o19899
Trade mark decision
- BL Number
- O/198/99
- Decision date
- 12 July 1999
- Hearing officer
- Mr M Reynolds
- Mark
- JANE AUSTEN
- Classes
- 03
- Applicant
- Corsair Toileteries Ltd
- Opponent
- Thomas Francis Carpenter, Catherine Jeanie Dean, Lady Mavis Coulson, Peter Russell-Jones, as trustees of The Jane Austen Memorial Trust
- Opposition
- Sections 3(1)(a), 3(1)(b), 3(3)(a), 3(3)(b), 3(6) & 5(4)(a)
Result
Section 3(1)(a) - Opposition not pursued
Section 3(1)(a) - Opposition not pursued
Section 3(1)(b) - Opposition succeeded
Section 3(1)(b) - Opposition succeeded
Section 3(3)(a) & (b) - Opposition failed
Section 3(3)(a) & (b) - Opposition failed
Section 3(6) - Opposition failed
Section 3(6) - Opposition failed
Section 5(4)(a) - Opposition failed
Section 5(4)(a) - Opposition failed
Points Of Interest
- None
Summary
Opposition under Section 3(1)(b) succeeded, the Hearing Officer concluding that, in the absence of any use of the mark in suit by the applicant by the relevant date, the only use with which the public would be familiar was the souvenir trade in relation to Jane Austen, and other activities conducted by the opponents. In his view, that use would only be seen as indicating the nature and subject matter of the goods, and unless or until educated through use to see the name differently, the public would not regard it as a badge of origin.
In regard to opposition under Section 3(3)(a) and (b), the Hearing Officer was not persuaded (a) that any public policy issue arises in relation to use of the names of famous individuals, given that each case was likely to turn in its own facts, or (b) is that the public would be deceived into thinking that goods sold under the mark were approved by the trustees (which in any event was not an appropriate issue to raise under Section 3(3)(b). Opposition on those grounds therefore failed.
In dismissing opposition under Section 3(6), the Hearing Officer refused to accept that trade under the mark in suit would damage Jane Austen’s literary heritage, and he was unable to draw any conclusions adverse to the applicant (regarding its intention to use the mark) from the number of pending and registered marks in its name. These might suggest commercial opportunism in his view but not bad faith.
Opposition under Section 5(4)(a) was dismissed briefly for want of substantiation of the opponent’s claim to goodwill.