Trade mark decision

BL Number

O/196/02

Decision date

10 May 2002

Hearing officer

Mr S P Rowan

Mark

ROLL BACK

Classes

01, 03, 05, 07, 08, 09, 14, 16, 24, 25, 27, 29, 30, 31, 32, 33, 34

Applicant

Asda Stores Limited

Opponent

Tesco Stores Limited

Opposition

Sections 3(1)(b) & (c), 3(3)(b)

Result

Section 3(1)(b) - Opposition failed.

Section 3(1)(c) - Opposition failed.

Section 3(3)(b) - Opposition failed.

Points Of Interest

• 1. A useful review of the meaning of the term "which may serve in trade" in Section 3(1)(c).

Summary

It was common ground between the parties that ROLLBACK was of American origin and that one of its meaning related to the roll back or reduction in prices charged for products. It was also accepted that the word was not well known in the UK at the relevant date - 19 February 1999 and it only became well known because of the extensive use and promotion of the applicant.

One of the central questions for decision by the Hearing Officer under Section 3(1)(c) was whether or not the word ROLLBACK was a mark "which may serve in trade" by which he took to mean was it a word which at the relevant date was likely to make the transition from America to widespread use as a descriptive word in the UK. In his view it was not foreseeable that this transition would automatically take place or that it would enter the language in a descriptive capacity in relation to price reductions and the like. Thus while it was a borderline case, in the Hearing Officer’s view, he reached the conclusion that the mark was acceptable for registration and opposition failed on this ground.

In view of his finding under Section 3(1)(c) the Hearing Officer decided that the mark at issue could not be "devoid of distinctive character" at the relevant date and opposition also failed on the Section 3(1)(b) ground.

As the mark at issue ROLLBACK was not known as a descriptive word at the relevant date, there could be no deception of the public under Section 3(3)(b). Opposition also failed on the 3(3)(b) ground.