Trade mark decision

BL Number

O/230/01

Decision date

14 May 2001

Hearing officer

Mr M Reynolds

Mark

MD-REPORT!

Classes

09

Applicant

Professional Audio Sales & Service Limited

Opponent

Audio Systems Components Ltd

Opposition

Section 5(4)(a)

Result

Section 5(4)(a) - Opposition failed.

Points Of Interest

• 1. In Passing Off it is necessary for an opponent to establish a goodwill in the mark if he is to have any chance of success in opposition proceedings.

Summary

The opponents claimed an earlier right in the marks MD-Report! and ASC MD-Report! in the context that they had distributed goods on behalf of the applicant. When the opponents were first approached by the applicant he had referred to the goods at issue by another name and the opponents claimed to have devised the mark ASC MD-Report!. This mark was referred to in a distribution agreement between the parties. Following a breakdown in relations between the parties the opponents claimed to have manufactured the equivalent product in-house and to have sold it under the mark ASC MD-Report!

In considering the ground of opposition under Section 5(4)(a) - Passing-Off, the Hearing Officer noted the lack of any real evidence to show that the opponents had acquired a goodwill in the mark at issue and concluded that they fell at the first hurdle. The placing of an order for some £22K worth of goods was insufficient on its own, to show what if any goodwill had been generated.