Trade mark decision

BL Number

O/418/00

Decision date

14 November 2000

Hearing officer

Dr W J Trott

Mark

REEF

Classes

25, 26

Applicants

Jack Bessant, Dominic Greensmith, Kenwyn House & Gary Stringer (A Partnership)

Opponents

South Cone Incorporated

Opposition

Sections 5(1), (2) & (4). Sections 32(3) & 3(6)

Result

Section 5(1) - Not pursued

Section 5(2)(b) - Opposition failed

Section 5(4) - Opposition failed

Section 32(3) & 3(6) - Opposition failed

Points Of Interest

• 1. The opponents appealed this decision to the High Court. In his decision dated 16 May 2001 Mr Justice Pumfrey considered the Courts powers in dealing with an appeal; overturned the Hearing Officer’s decision regards Section 5(2) but upheld his decision as regards intention to use and his decision under Section 5(4)(a). (See 2002 RPC 19).
• 2. The applicants appealed to the Court of Appeal. That Court agreed generally with Mr Justice Pumfrey’s decision as to the handling of appeals but re-instated the Hearing Officer’s decision under Section 5(2)(b) because he had made no error of principle and was not clearly wrong as regards his decision under that Section. See 2003 RPC 5.

Summary

The opponents owned the registered mark REEF BRAZIL in respect of "Footwear" and had used it in respect of shoes for use in surfing. Little use in respect of other goods such as T-shirts by the relevant date. The applicants are a rock band and having had some success propose to widen their area of activity by the sale of promotional items of clothing such as T-shirts, hats, badges etc.

Under Section 32(3) and 3(6) their intention to trade was disputed by the opponents but the Hearing Officer concluded that there was insufficient evidence to show that the applicants had acted in bad faith when they filed their application. Under Section 5(2) the Hearing Officer compared the respective goods T-shirts etc and Footwear, which he considered similar, and the respective marks REEF and REEF BRAZIL. Taking an overall view of the conflict the Hearing Officer concluded that there was no likelihood of confusion.

Under Section 5(4) - Passing Off - the Hearing Officer noted that there was some evidence from declarants that the opponents goods were referred to as REEFS but all the documentary evidence showed use of the mark REEF BRAZIL. Bearing in mind also, the respective fields of activity, the Hearing Officer concluded that the opponents had not proved the likelihood of misrepresentation or passing off.