Trade mark decision

BL Number

O/550/01

Decision date

10 December 2001

Hearing officer

Mr J MacGillivray

Mark

HAIL HAIL

Classes

24, 25, 26

Applicant

Dig Souvenirs Limited

Opponent

Celtic PLC

Opposition

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

Result

Section 3(4) - Opposition failed

Section 3(6) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• None

Summary

The opponents owned registrations of the mark HAIL HAIL in a number of Classes but these were obtained after the relevant date of these proceedings - 25 February 1998. They also claimed to have used the mark in relation to videos from 1991, tie pins and pennants from 1993 and scarves from 1995. Some of this use was with the words Celtic Football Club but there was use of the mark HAIL HAIL (solus) on tie pins. Precise figures relating to turnover and promotion were not available but estimated figures from 1993-1998 were provided. The opponents had also obtained an interim interdict from the Court of Session in Scotland which barred the applicants from using the mark HAIL HAIL pending a full trial.

The applicants also claimed modest use of the mark from 1980 onwards but such use was not supported by relevant documentation.

Under Section 5(4)(a) - Passing Off - the Hearing Officer was asked by both parties to ignore the Court interdict and decide this ground on the information before the Registrar. The Hearing Officer carefully considered the evidence filed by the opponents but concluded that they had not demonstrated that they possessed a reputation or goodwill in the mark HAIL HAIL at the relevant date, as an indication of origin. Opposition failed on this ground.

Moving on to the ground under Section 3(4) the Hearing Officer determined that it could not exist as a separate ground of opposition from that under Section 5(4)(a). As the opponents had failed under Section 5(4)(a) they must also fail under Section 3(4).

The ground under Section 3(6) related to the fact that the applicants had originally filed a series of three marks. The latter two which had been deleted consisted of the marks HAIL HAIL (THE CELTS ARE HERE) and these same words represented in a roundel were closely similar to a device mark owned and registered by the opponents. The opponents submitted that even though these latter two marks had been deleted, the mark as a totality had been filed in bad faith. The Hearing Officer did not accept this approach and determined that the deletion of the two marks in question could remedy the defect of bad faith in the same way as a specification of goods or services could be restricted to avoid a finding of bad faith under Section 3(6). Opponents thus failed on this ground.