Trade mark decision

BL Number

O/498/01

Decision date

12 November 2001

Hearing officer

Mr J MacGillivray

Mark

GLENLOMOND

Classes

11

Applicant

Fires & Fireplaces Limited

Opponent

Glenlomond Fire Surrounds Ltd

Opposition

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

Result

Section 3(3)(b) Opposition failed

Section 3(6) Opposition failed

Section 5(4)(a) Opposition failed

Points Of Interest

• Evidence in Passing Off proceedings: This case highlights the need to provide specific and detailed evidence in such proceedings.

Summary

The essential ground of opposition in these proceedings was under Section 5(4)(a) - Passing Off. The opponents had used their mark GLENLOMOND since 1978 in relation to fire surrounds and mantels and there was some limited use in relation to gas and electric fires (the goods of interest to the applicants). However, sales were modest; there was little promotion of the goods; there was no evidence that the gas and electric fires had been branded with the GLENLOMOND mark and there was little evidence to show how the opponents’ goods were sold and marketed under the mark. In the absence of detailed evidence as to the extent of goodwill and reputation, the Hearing Officer concluded that the respective goods were different. The opponents failed on this ground of their opposition.

In view of the Hearing Officer’s decision under Section 5(4)(a), he concluded that the mere fact that the applicants had been aware of the opponents business when they filed their application was not sufficient to justify a finding of bad faith under Section 3(6). He also considered that as Section 3(3)(b) had not been supported by evidence to substantiate the claims made in the pleadings, the opponents also failed on this ground.