Trade mark decision

BL Number

O/251/00

Decision date

21 July 2000

Hearing officer

Mr M Reynolds

Mark

ROYAL ENFIELD MADE LIKE A BULLET

Classes

12

Applicant

Eicher Limited - Royal Enfield Motor Units (No 2031741)

Opponent

David Matthew Scott Holder T/A Velocette Motorcycle Company

Opposition

Sections 5(4)(a) & 3(6)

Result

Opposition & Invalidation

Section 5(4)(a) - Action failed

Section 3(6) - Action failed

Points Of Interest

• 1. This decision was appealed to the Appointed Person by David Holder. Eicher Limited made an application to the Appointed Person to transfer the proceedings to the High Court. This request was refused by the Appointed Person in his decision dated 4 May 2001 (BL O/273/01). 2. The Appeal was decided by the Appointed Person in his decision dated 27 July 2001 (BL O/363/01). He upheld the Hearing Officer’s decision. The Appointed Person’s decision was reported in 2002 RPC 24.

Summary

The mark as registered under Trade Mark No 1514064 is ROYAL ENFIELD.

The original Royal Enfield mark was of long standing. In 1966/67 the company split into two divisions and it was from the subsequent demise of one of these divisions that Mr Holder claimed to have derived title in the mark. His present company (inherited from his father) continue to supply spare parts for Royal Enfield Motorcycles.

The Eicher history is very different. In the 1950's Royal Enfield appointed agents in India to sell their motorcycles and that company commenced to manufacture motorcycles under the ROYAL ENFIELD name. Subsequently the Royal Enfield Company went into liquidation and only Enfield India produced ROYAL ENFIELD Motorcycles were available for sale in the UK through a company called Bavanar Products Ltd. Eicher claimed marketing and sales for the past 10 years under the ROYAL ENFIELD mark in the UK and said that he was not aware of any products under that mark produced by Mr Holder.

Under Section 5(4)(a) - Passing Off - the Hearing Officer undertook a careful review of the evidence of both parties. In particular he reached the conclusion that Mr Holder did not have any statutory or common law rights in the mark ROYAL ENFIELD and that the supply of spare parts for ROYAL ENFIELD motorcycles did not generate a goodwill which accrued to him or his company. Thus it was not possible for him to found an action under 5(4)(a) and the consolidated actions therefore failed.

The ground under Section 3(6) was on the basis of a claim by Mr Holder that Enfield India had asked him in 1989 if he was interested in selling his rights in the ROYAL ENFIELD mark to them. Subsequently Bavanar (Eicher’s UK Agents) applied for registration of the mark ROYAL ENFIELD in 1992, having used the mark ENFIELD from 1987/88. In summary the Hearing Officer was of the view that the application were not filed in bad faith.