Trade mark decision

BL Number

O/422/99

Decision date

1 December 1999

Hearing officer

Mr A James

Mark

INDEPENDENT RETAILER

Classes

16

Applicants

Alliance of Independent Retailers Ltd

Opponents

Reed Business Publishing Ltd

Opposition

Sections 3(1) and 3(1)(b) - (d), Section 3(3)(b) Section 5(2)(b)

Result

Section 3(1) - Opposition failed

Section 3(1)(b) and (c) - Opposition succeeded

Section 5(2)(b) - Opposition failed

Points Of Interest

• 1. Section 7 (Honest Concurrent Use). If the Registrar uses the provisions of Section 7 to allow an application to proceed to advertisement it is not open to a third party opponent to use marks not in their ownership to launch opposition.

Summary

Independent Retailer accepted as a generic description of retail businesses which are not part of large chains.

Applicants claimed use from 1984 and turnover figures given as £181K in 1990 increasing to £248K in 1994.

Hearing Officer found that the applicants evidence was not precise, that promotional activity was low and that the principal readership of the magazine was the applicants own members. Thus the name of the magazine will not have been relied upon to the usual extent to distinguish the applicants publication from those of others. Onus on applicant to show that mark is distinctive not discharged. Mark not acceptable under 3(1)(b) and (c).

Opposition under 5(2)(b) based on ownership of the registered mark INDEPENDENT GROCER. However, respective marks both descriptive and small differences sufficient to distinguish them. Two other marks relied upon by the opponent were not owned by him. As the applicant had proceeded to advertisement under the provisions of Section 7 Opposition could only be relevant if launched by the proprietors of those marks. Opposition therefore failed under Section 5(2)(b).