Trade mark decision

BL Number

O/104/02

Decision date

11 March 2002

Hearing officer

Mr M Reynolds

Mark

HARRODIAN

Classes

41

Applicant

The Harrodian School Limited

Opponent

Harrods Ltd

Opposition

Section 5(2)(a)

Result

Section 5(2)(a) - Opposition failed

Points Of Interest

• None

Summary

The opponents opposition was based on their ownership of the mark HARRODIAN registered in Class 41 for

"Operation of Cookery Schools, conduct of gymnastic and sporting activities; training in equestrianism and carriage driving; all included in Class 41.

The opponents registration had been achieved in respect of this restricted specification following opposition by the current applicants in these proceedings. That opposition had been decided under the Trade Marks Act 1938 and in those proceedings the current applicants had claimed a prior right in respect of "preparatory school services". The specification applied for here reads as follows:

"Preparatory school services; public school services; secondary school services; sixth form college services".

Both sides filed evidence relating to the earlier opposition proceedings and to an action in the High Court but there was no evidence to show that the position of the respective parties had changed to any significant extent. In relation to these proceedings the opponents drew attention to the fact that the applicants were seeking wider rights than was apparent from their earlier activities; also because the decision in the earlier proceedings had restricted the specification of the opponents mark, they had decided to ask that the grounds of their opposition be amended to reflect their new circumstances.

The Hearing Officer was concerned at the lateness of the request to amend the grounds of opposition and noted that this matter had been the subject of correspondence between the parties and the Registry but the deficiencies in the pleadings had not been resolved. It was thus with some reluctance that the Hearing Officer agreed to the amendments so that the real issues between the parties could be decided.

Under Section 5(2)(a) the Hearing Officer noted that the respective marks were identical and went on to make an exhaustive comparison of the respective services by application of the tests set down in British Sugar Plc v James Robertson & Sons Ltd [1999] RPC 281 and Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1999] RPC 117. The Hearing Officer decided that the nature, uses and trade channels of the respective services were different and that they were not in competition with each other. He concluded that overall the respective services were not similar. The opposition therefore failed.