Trade mark decision

BL Number

O/446/01

Decision date

9 October 2001

Hearing officer

Mr M Reynolds

Mark

MAGIC

Classes

35, 38, 41

Applicant

Emap Radio Limited

Opponent

Radio Maldwyn

Opposition

Sections 3(1)(b) & (c) & 5(4)(a)

Result

Sections 3(1)(b) & (c): - Opposition partially successful

Section 5(2)(b): - Opposition failed.

Points Of Interest

• Marks proceeding on the basis of acquired distinctiveness. The examiner should be alert to ensure that the application does not proceed for goods/services in respect of which there has been no use.

Summary

The opponents opposition was based on a claim that the applicants mark was laudatory and that they themselves had used it as part of a name in relation to radio broadcasting services in Wales. The applicants had used their mark prior to application and had filed evidence to support a claim that their mark MAGIC had acquired distinctiveness through use.

Under Section 3(1)(b) & (c) the Hearing Officer considered the laudatory nature of the word MAGIC and concluded that on a prima facie basis it was not a distinctive mark. However, taking account of the evidence he considered that it was distinctive in relation to the services where use had taken place - radio broadcasting services (Class 38) and radio entertainment services (Class 41). He determined therefore that the application could only proceed in respect of these services and that all other services claimed must be deleted from the application, if it was to proceed.

With regard to Section 5(4)(a) - Passing Off - the Hearing Officer concluded that the applicants had used their mark before the opponents commenced to use their mark. Claims to earlier use by the opponents were not substantiated so they failed on this ground.