Trade mark decision

BL Number

O/158/01

Decision date

2 April 2001

Hearing officer

Mr M Reynolds

Mark

THE SUPREMES

Classes

09, 16, 25, 41

Applicant

May Wilson Enterprises Inc

Opponent

Lynda Laurence and Scherrie Payne

Opposition

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

Result

Section 5(4)(a) - Opposition succeeded

Section 3(6) - Opposition succeeded

Points Of Interest

• 1. None

Summary

In outlining the relevant background, the Hearing Officer explained that the owner of the applicant company (Mary Wilson) was a founder member of The Supremes group and remained a member from 1961 until its disbandment in 1977, the opponents also being members for part of that period. The group then ceased to exist as an active group between 1977- 1985, Mary Wilson then pursuing a solo career. From 1985 to the material date in these proceedings, the opponents performed as The Supremes, and in dealing with their opposition under Section 5(4)(a) the Hearing Officer concluded that by that date (in 1995) the name had come to be associated with the opponents in the UK, and the goodwill in the underlying business accrued to them.

He then proceeded to conclude briefly that use by the applicant of the mark in suit would involve misrepresentation and he inferred that damage would follow, the fields of activity being identical and there being no valid claim to concurrent use. Opposition on that ground therefore succeeded.

In considering opposition under Section 3(6), he applied the usual objective test and concluded that the applicant's action in applying for the mark in suit fell short of the required standards of acceptable commercial behaviour, given the history of the mark. Although he then proceeded to consider whether there was also a lack of intention on the applicant's part to use the mark, he declined to reach a formal view on that aspect of the Section 3(6) case as there had been no cross-examination.