Trade mark decision

BL Number

O/164/01

Decision date

5 April 2001

Hearing officer

Mr M Reynolds

Mark

DAWN

Classes

16

Applicant

Touch Media Co Ltd

Opponent

Pakistan Herald Publications (PVT) Ltd

Opposition

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

Result

Section 3(4) - Opposition not pursued

Section 3(6) - Opposition failed

Section 5(4)(a) - Opposition succeeded

Points Of Interest

• 1. None

Summary

Opposition based on opponent's claim to substantial UK reputation and goodwill under the trade mark DAWN arising from importation of copies of an English language newspaper of that name published in Pakistan, and from an internet news service offered under that name.

In regard to opposition under Section 5(4)(a), the Hearing Officer was satisfied on the evidence, having regard to the usual case law, that the opponent enjoyed goodwill in the UK, albeit in a relatively small market, under what was by any standard a distinctive name. Since the applicant sought to trade in identical goods under the same mark, he found it reasonable to infer that misrepresentation and damage would occur. Opposition on that ground therefore succeeded.

As to opposition under Section 3(6), the Hearing Officer expressed some misgivings about the applicant’s position but did not think there was a sufficient basis to find against them on that ground in the absence of cross-examination.