Trade mark decision

BL Number

O/426/00

Decision date

21 November 2000

Hearing officer

Mr R A Jones

Mark

MOTORAIL

Classes

39

Applicants

Motorail Limited

Opponents

Rail Europe Limited

Opposition

Sections 5(2)(b) & 5(4)(a). Section 6(1)(c)

Result

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Section 6(1)(c) - Opposition failed

Points Of Interest

• 1. Convention Country - See requirements set down in Section 56(1)

Summary

The opponents opposition was based on their ownership and use of the mark MOTORAIL in relation to the provision of car carrying services in France. It was claimed that such services were advertised in the UK by way of brochures, newspaper and TV advertising and press releases etc.

Under Section 5(4)(a) - Passing Off - the Hearing Officer accepted that the opponents mark had been promoted in the UK but found the evidence of reputation to be inconclusive. He concluded that the opponents had provided insufficient evidence to show that they had a goodwill in their mark in the UK. Opposition failed on this ground.

Under Section 5(2)(b) and 6(1)(c) the Hearing Officer applied the relevant provisions of the Paris Convention as set down in Sections 55 and 56 of the Act. As he had found under Section 5(4) the Hearing Officer concluded that the opponents had not made a case for recognition of their mark MOTORAIL or knowledge of it by the relevant public. Thus a case had not been established that the mark was well known. Additionally Section 55(1)(b) indicates that a "Convention Country" means a country other than the UK - and the opponents are a UK business - they do not qualify for protection under this heading.