Trade mark decision

BL Number

O/269/99

Decision date

4 August 1999

Hearing officer

Mr M Foley

Mark

MGM

Classes

12

Applicants

Michael J Bentley

Opponents

Rover Group Ltd

Opposition

Sections 3(3), 3(4), 3(6), 5(2)(b), 5(4)(a), 32(3) & 56

Result

Section 3(3): - Opposition failed.

Section 3(4): - Opposition failed.

Section 3(6): - Opposition failed.

Section 5(2)(b): - Opposition succeeded

Section 5(4)(a): - Opposition succeeded

Section 32(3): - Opposition failed.

Section 56: - Opposition failed.

Points Of Interest

• 1. None

Summary

This application was originally made under the 1938 Trade Marks Act, but by virtue of notice given under Schedule 3, paragraph 11 of the 1994 Trade Marks Act the registrability of the marks in suit fell to be determined under the later Act. Opposition was based on the opponent’s registrations, notably in Class 12, of the mark MG, and on the prior use of the marks MGA, MGB and MGC, all in respect of vehicles.

In dealing with opposition under Section 5(2)(b), the Hearing Officer had little doubt that the opponent enjoyed a longstanding reputation under its marks, kept alive by a trade in second hand vehicles, and he concluded that neither the stylisation of the mark in suit, nor the third letter M would avoid the likelihood of confusion or trade association. Opposition on that ground therefore succeeded.

Under Section 5(4)(a) the Hearing Officer found the opponent's claim to be associated with the colour burgundy (as featuring in one of the marks in suit) to be unsubstantiated, but in applying the usual case law he proceeded to find it reasonable to assume that the opponent might extend its range to include an MG"M", and that a public well used to seeing the MG marque used in conjunction with a range of suffix letters would associate the applicant's goods with those of the opponent, with resulting damage to the opponents. Thus, opposition on this ground also succeeded.

Opposition under Sections 3(3) and 3(6) was held to be unsubstantiated, and under Sections 3(4) and 32(3) to be misconceived. The opponent also failed under Section 56, not being qualified under Section 55(1)(b).