Trade mark decision

BL Number

O/356/02

Decision date

23 August 2002

Hearing officer

Mr G Salthouse

Mark

GOLDDIGGA

Classes

25

Applicant for Invalidity

Steven Hughes & Freevote Limited

Registered Proprietor

Designdock Limited

Invalidity

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

Result

Section 47(1) & 3(6) - Invalidity action failed

Section 47(2) & 5(4)(a) - Invalidity action failed

Points Of Interest

• None

Summary

The applicants for invalidity filed evidence of use in which it was claimed that they had adopted the mark GOLDIGGERS (which include the spellings GOLDIGGER, GOLD DIGGER and GOLD DIGGERS) in May 1994 and to have used it since that date. The supporting exhibits showed use in the form HUSSY (in large font) and GOLD DIGGERS (in smaller font and below the mark HUSSY). A letter from woven label suppliers stated that labels had been supplied for a number of marks, including HUSSY GOLDIGGERS from 1994 onwards. Photographs of T-Shirts showed the mark on the front of the shirts in the form HUSSY GOLD DIGGERS (as described above).

The applicants for invalidity claimed to have known the registered proprietors (Mr Thalman) for several years and that he had purchased GOLDIGGERS Clothing. He was thus aware that the mark was owned by the applicants for invalidity. Initially Mr Thalman claimed not to know the applicants and only conceded the point when relevant correspondence was filed in the proceedings.

Three declarations from trade sources were also provided (one later discounted because of a change of mind) which indicated that they associated the mark GOLDIGGERS (and variant spellings) with the word HUSSY and/or the two applicants for invalidity.

Under Section 5(4)(a) - Passing Off - the Hearing Officer was unconvinced by the evidence filed that the applicants for invalidity had a reputation and goodwill in the mark GOLDIGGERS (and variants thereof) since it was somewhat sketchy and unfocussed and it was not clear that GOLDIGGERS had been used as a mark to indicate origin as compared to mere decoration on T-Shirts and the like with the associated word HUSSY. Invalidity thus failed on this ground.

Under Section 3(6) the Hearing Officer noted from cross-examination at the hearing that Mr Thalman’s memory was somewhat selective on occasions and his answers were somewhat confused. However, the only proved evidence of use was the decorative use on T-shirts and while the Hearing Officer believed that Mr Thalman was aware of such use by the applicants he may have believed that their mark was HUSSY and they did not have "a strong and genuine interest" in this GOLDIGGER mark. In conclusion he stated that earlier use by another party of a sign in a non-trade sense is insufficient to support an allegation that a trade mark has been applied for in bad faith. Invalidity thus failed on this ground.