Trade mark decision

BL Number

O/076/01

Decision date

15 February 2001

Hearing officer

Mr M Knight

Mark

ISSIGONIS

Classes

12

Applicant

Simon James Empson

Opponent

Rover Group Ltd

Opposition

Sections 3(1)(a), (b), (c) & (d); Sections 3(3)(b) & 3(6) & Section 32(3)

Result

Section 3(1)(a) - Opposition failed

Section 3(1)(b) - Opposition succeeded

Section 3(1)(c) - Opposition succeeded

Section 3(1)(d) - Opposition failed

Section 3(3)(b) - Opposition not pursued

Section 3(6) - Opposition failed

Section 32(3) - Opposition not pursued

Points Of Interest

• Continued use of term by applicant - The Hearing Officer observed that his decision offered no bar to the applicant’s continued descriptive use of the term in the course of business, and in due course it was even possible that the proviso to Section 3(1) could allow subsequent registration of the term if it became factually distinctive through use.

Summary

The opponent’s evidence showed that considerable fame attached to the word ISSIGONIS since it was the (very rare) surname of a famous designer of motor vehicles and their parts and fittings, but the Hearing Officer was not persuaded on the evidence that the word directly described goods covered by the application in suit (modified cars, and parts and fittings therefor); rather, it could function as a badge of origin and as a trade mark. Opposition under Section 3(1)(a) therefore failed. However, the mark in suit was held to fall foul of Sections 3(1)(b) and (c) since it could be an apt term for use in the business of reproducing or restoring classic cars (and their parts and fittings) to indicate the particular type or model of vehicle.

Opposition under Sections 3(1)(d) and 3(6) also failed for want of relevant evidence.