Trade mark decision

BL Number

O/212/02

Decision date

17 May 2002

Hearing officer

Mr D Landau

Mark

EASTERN NATIONAL

Classes

39

Applicant for Invalidity

National Car Rental Systems Inc

Registered Proprietor

Firstgroup PLC

Invalidity

Section 47 based on Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 47 & 5(2)(b) - Invalidity action failed.

Section 47 & 5(3) - Invalidity action failed.

Section 47 & 5(4)(a) - Invalidity action failed.

Points Of Interest

• The applicant appealed to the Appointed Person. In his decision dated 2 December 2002 (BL O/531/02) the Appointed Person upheld the Hearing Officer’s decision.

Summary

The applicant for invalidity based its application on a prior registered mark, NATIONAL & device, in Class 39 in respect of "Automobile rental and reservation services". The registered proprietor’s mark is registered in respect of "Passenger transport services incorporating related travel arrangement services".

The applicant for invalidity also claimed a reputation in its mark but such use as took place in the UK appeared to cease some eight years prior to the relevant date of January 1996. Use may have resumed in 1998 but this did not impact on the Hearing Officer’s decision. As the Hearing Officer concluded that the applicant had not proved to have a reputation or goodwill in its mark at the relevant date, it followed that it must fail in its request for invalidity under Sections 5(3) and 5(4)(a) - Passing Off.

Under Section 5(2)(b) the Hearing Officer compared the respective services in some detail and concluded that they were not similar. Assuming that he was wrong in so finding, he went on to compare the respective marks NATIONAL (and device) and EASTERN NATIONAL. In relation to that comparison the Hearing Officer noted that the word NATIONAL is very descriptive and of low distinctive character in relation to any services which may be provided on a national or nation-wide basis. In making the comparison between the respective marks the Hearing Officer considered that the device element of the opponents mark was the dominant and distinctive element in that mark. In comparing the respective marks the Hearing Officer considered them to be visually and phonetically different because of the presence of the word EASTERN in the registered proprietor’s mark. The Hearing Officer also decided that conceptually the respective marks were different and he did not think the presence of the descriptive word NATIONAL would lead the public to assume the marks were in some way associated. As the services were not similar and the marks were not similar it followed that the applicant also failed on this ground.