Trade mark decision

BL Number

O/132/02

Decision date

21 March 2002

Hearing officer

Mr M Reynolds

Mark

ROY OF THE ROVERS

Classes

25

Applicant

D Jacobson & Sons Limited

Opponent

Egmont Fonden

Opposition

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

Result

Section 3(6) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

• None

Summary

At the outset of these proceedings the opponent owned a registration for the mark ROY OF THE ROVERS in respect of goods in Classes 9 and 16 and Sections 5(2)(b) and 5(3) were included in the grounds of opposition. Subsequently the registration was revoked on the grounds of non-use (SRIS O/212/01) and thus the only grounds remaining in these proceedings were under Sections 5(4)(a) and 3(6).

The opponent claimed ownership of the copyright in the ROY OF THE ROVERS comic strip and provided details of various licenses which had been granted to other firms to use the mark in respect of a range of goods such as computer games, football shirts, board games etc in the early 1990's but provided no detailed evidence as to the extent of use which had taken place over what period or in what areas. As a result the Hearing Officer was unable to conclude that the opponent had the relevant goodwill in the mark to sustain an attack under Section 5(4)(a). In passing the Hearing Officer noted that there was no copyright in a name such as ROY OF THE ROVERS.

The ground under Section 3(6) was pleaded on the basis that the mark had been used by the opponent prior to the applicant filing his application but as none of this claimed use was in respect of footwear the Hearing Officer decided that a claim to bad faith had not been made out.