Trade mark decision

BL Number

O/270/02

Decision date

8 July 2002

Hearing officer

Dr W J Trott

Mark

MOLEWOOD GARAGE

Classes

12, 37

Applicant for Invalidity

Douglas James Robb

Opponent

Molewood Garage Limited

Opposition

Sections 47(1) & 47(2) based on Sections 3(6) & 5(4)(a)

Result

Sections 47(1) & 3(6): - Invalidity action successful.

Sections 47(2) & 5(4)(a): - Invalidity action successful.

Points Of Interest

• See supplementary decision dated 18 October 2002 (BL O/430/02) re correction of error and reduction in costs award to take account of unactioned TM 22.

Summary

Both parties filed evidence in the proceedings and the Hearing Officer accepted that the following facts had been established:

1. Molewood Garage had been associated with the premises at Molewood Road since the 1920's.

2. In 1985 a Mr Ken Lewsey purchased the freehold of the garage. He carried on a car repair business until his retirement in 1998.

3. In 1988 Mr Robb (the applicant) set up a car sales business at Molewood Garage but traded under the name 'Post Vale Auto Services'.

4. In August/September 1998 Mr Lewsey retired and Mr Robb took out a lease on the premises.

5. In September/November 1998 a Mr Edwards (a director of Molewood Garage Ltd) was granted a sub-lease by Mr Robb. He set up a car repair business trading as 'Molewood Garage'. At the outset Mr Robb told Mr Edwards that he could only have shared use of the name 'Molewood Garage'.

6. In December 1998 Mr Edwards registered the company name 'Molewood Garage Limited' (the current proprietor).

7. When Mr Robb discovered the registration of the company name he gave Mr Edwards notice to quit in May 1999.

8. On 4 November 1999 Mr Edwards applied for registration of the mark in suit, by way of his company 'Molewood Garage Limited'.

9. In March 2000 Mr Robb acquired freehold of the property and goodwill in the premises in Molewood Road, including Molewood Garage.

10. On 30 April 2000 Mr Edwards was given one month to quit the premises by Court Order.

With regard to the ground under Section 3(6) the Hearing Officer concluded that the application to register the mark in suit had been made in bad faith. Mr Edwards had only traded under the name for a short period; that he was a sub-lessee and had been told that use of the name was to be shared and there was evidence to support Mr Robb's claim that he also used the name in trade in November 1998. When Mr Edward's company applied for registration in November 1999 the Hearing Officer concluded from the evidence before him, that it was not in a position to claim ownership and/or proprietorship of the mark MOLEWOOD GARAGE. The applicant thus succeeded on this ground.

With regard to the ground under Section 5(4)(a) - Passing Off - the Hearing Officer concluded that goodwill in the mark was likely to have been in the hands of Mr Lewsey when application was made in November, 1999. While Mr Edward's had traded for a short period under the mark MOLEWOOD GARAGE there was no evidence to suggest that he had built up a separate and distinct reputation or that he was the only one using it. By registering the mark and claiming proprietorship the possibility of misrepresentation was obvious since he could set up a business under the same name close by, or even next door, to the existing business. The applicant was also successful on this ground.