Trade mark decision

BL Number

O/216/02

Decision date

21 May 2002

Hearing officer

Mr G Salthouse

Mark

MOOG

Classes

15

Applicant for Invalidity

Dr Robert A Moog

Registered Proprietor

Alexander Francis Winter

Opposition

Section 47 based on Sections 3(3)(b) & 3(6)

Result

Sections 47 & 3(3)(b) - Invalidity action failed.

Sections 47 & 3(6) - Invalidity action failed.

Points Of Interest

• The Hearing Officer considered that the ground raised under Section 3(3)(b) was more appropriate to Section 5(4)(a) - Passing Off - and he also considered the matter under that Section. He decided that on the evidence before him that Invalidity would also fail on that ground since the evidence as to the sale of MOOG products in the UK was not specific; there was no turnover or promotion figures and it was not clear who, if anyone owned the goodwill in the mark.

Summary

The applicant for invalidity stated that he invented the electronic synthesiser in the early 1970's and MOOG synthesisers were manufactured and marketed by an American Company, Norlin Industries Inc, by way of an agreement with himself. Subsequently the MOOG marks was assigned to Norlin but Dr Moog retained the right to use his own name (Robert Moog, Bob Moog and R A Moog).

In 1984 Norlin sold the MOOG music business to two former executives but their company Moog Electronics went bankrupt. The company’s assets were purchased by an investor group who also offered service and genuine repair parts for Moog music products. It is claimed that genuine MOOG parts have been sold by a Mr McNiff since 1991 and these are still currently available.

Under Section 3(3)(b) the Hearing Officer noted the applicant’s claim that the registered proprietor had not acquired rights in the mark MOOG from any of the previous owners. Thus the public could be deceived as to the origin of MOOG goods which have been associated with the applicant for many years. The Hearing Officer concluded that Section 3(3)(b) applies where the deception alleged arises from the nature of the mark itself and not who owns it. Invalidity thus failed on this ground.

Under Section 3(6) the Hearing Officer decided that the applicant had not made out a significant case. The applicant had sold the MOOG mark to Norlin Industries and there was no evidence as to any transfer in ownership following the demise of that company and Moog electronics in the late 1980's. The UK registration of the MOOG mark expired in 1994. The owner of the registered mark stated his belief that the mark was abandoned for some time before he applied for registration 1996 and there was no evidence for registration in 1996 and there was no evidence filed to show that he was aware of any continuing use of the mark in relation to spare parts. Invalidity failed on this ground.