Trade mark decision

BL Number

O/099/02

Decision date

5 March 2002

Hearing officer

Mr M Knight

Mark

CLUB NATION

Classes

09

Applicant

Ministry of Sound Recordings Limited

Opponent

Virgin Records Limited

Opposition

Sections 3(1)(a); 3(1)(b); 3(1)(c) & 3(1)(d)

Result

Section 3(1)(a): - Opposition failed.

Section 3(1)(b): - Opposition successful.

Section 3(1)(c): - Opposition successful.

Section 3(1)(d): - Opposition successful.

Points Of Interest

• 1. Combinations of descriptive and generic terms
• 2. Expert witnesses
• 3. Acquired distinctiveness

Summary

The opponents’ case, in essence, was that the marks merely described a type of music and the group at which that music was aimed. The Hearing Officer could not find that the basis for a Section 3(1)(a) objection had been made out and he dismissed that ground. Turning to the remaining grounds the Hearing Officer noted that it was common ground between the parties that the first element in each of the marks in suit was descriptive of a style or genre of music. The questions therefore posed were (a) was the word NATION one which was in common use at the date of application to describe a group of people with shared tastes in music and (b), if the word NATION is descriptive is the whole sign sought to be registered, in each case, one which must be refused registration?

Evidence had been brought forward as to the meaning of the word NATION as used in the music industry. Taking account of the evidence and submissions, the Hearing Officer concluded that within the music industry NATION was indeed a descriptive term.

He went on to find that a descriptive term combined with a generic term produced a normal term for denoting the goods. He therefore found the opposition succeeded under Sections 3(1)(b), (c) and (d).