Trade mark decision

BL Number

O/486/01

Decision date

6 November 2001

Hearing officer

Mr G Salthouse

Mark

ALFREDO

Classes

42

Applicant for Invalidity

Alfredo International Inc

Registered Proprietor

J J Darboven Holding AG & Co

Invalidity

Sections 47(1) based on grounds 1(1), 3(1)(a), 3(1)(b), 3(4), 3(6), 5(1), 5(2), 5(4)(a) & 56

Result

Sections 1(1), 3(1)(a), 3(1)(b), 3(4), 3(6), 5(1), 5(2), 5(4)(a) & 56 Application for Invalidity failed

Points Of Interest

• Reputation: Where a party seeks to establish a reputation in the UK based on use outside the UK, Internet sites etc then evidence to support such claims needs to be very focussed and detailed.

Summary

The applicants stated that they have operated a restaurant under the name ALFREDO at the Epcot Center, Florida, for the past seventeen years. They have also operated a restaurant in New York since 1978 (currently closed but due to re-open in the year 2000). The applicants claimed that a great number of UK citizens visit the Epcot Center each year and claimed that some 35,000 UK citizens used their restaurant each year. The restaurant advertised in various publications, all US, and the applicants say they have had an Internet site under the name ALFREDO since 1996.

At the hearing the applicants’ representative said that he was not arguing the grounds under Sections 1(1), 3(1)(a), 3(1)(b), 3(4) and 3(6) but was not abandoning them in case they were needed on appeal. As the applicants had filed no evidence in support of the grounds under these sections, the Hearing Officer dealt with them briefly and dismissed them all.

Under Sections 5(1), 5(2), 5(4)(a), and 56 the Hearing Officer noted the applicants claims to be well known in the UK because the UK and USA are neighbouring territories which share the same language and media and have close trade relations. Attention was also drawn to the use of the Epcot Center restaurant by a significant number of UK residents. The Hearing Officer refused to accept such arguments. In his view the applicants had failed to show that they had any reputation in the UK and the claims made were not substantiated by any real evidence. Even the Internet site, which could be accessed by UK residents, clearly refers to a service which is available only in the USA. The applicant thus failed on these grounds.