Trade mark decision

BL Number

O/151/02

Decision date

2 April 2002

Hearing officer

Mr S P Rowan

Mark

MR BEAN'S

Classes

29, 30

Applicant

Clifford James Moss

Opponent

Tiger Television Limited

Opposition

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

Result

Section 5(3): - Opposition failed.

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

Points Of Interest

• 1. Character merchandising

Summary

The opponents were producers of the TV series MR BEAN starring Rowan Atkinson. The applicants already had a 1938 Act registration of MR BEAN’S in Class 29. As a preliminary matter, the Hearing Officer ruled against the opponents who were seeking to adduce further evidence under Rule 13(11), which related to merchandising and licencing agreements concluded "nearly two years after the relevant date". The Section 3(6) ground was withdrawn at the hearing.

Under Section 5(3) the Hearing Officer found that the marks were very similar and the respective goods and services not similar. He went on to examine the ‘reputation’ aspect, in relation to their registrations of the mark MR BEAN. In particular, he sought an answer to the question, how much of the turnover claimed related to the television programmes (which was out with the specification) and how much to trade mark use on goods in Classes 9, 16 and 28? The evidence could not provide the answer and the Hearing Officer was unwilling to infer a reputation amongst the relevant public for the goods and services for which it was registered. The Section 5(3) ground failed. However, he went on to consider the matter of ‘due cause’ as to why the applicants should be allowed to continue to use the mark. He found that the proposed expansion into other areas of trade seemed reasonable.

Under Section 5(4)(a), a careful examination of the evidence and arguments led him to the view that there would be no actionable misrepresentation. That ground failed also.

He awarded costs within the published scale.