Trade mark decision

BL Number

O/368/02

Decision date

5 September 2002

Hearing officer

Mr M Foley

Mark

POIROT

Classes

33

Applicant

Babco International Limited

Opponent

Agatha Christie Limited

Opposition

Sections 3(6), 5(3) & 5(4)(a)

Result

Section 3(6) - Opposition failed.

Section 5(3) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

• 1. Use of the name of a character in books or films might indicate an association with a person or company but that does not give rise to a trade mark right.

Summary

The opponents opposition was based on three registrations of their mark POIROT in Classes 9, 16 and 41 but it was common ground that these goods and services were not similar to the goods of the applicants. They also claimed an intention to use their mark in relation to chocolate based liqueurs but there was no evidence of any trade in such goods prior to the applicants date of application. A claim in relation to a licensing strategy was also short of detail and there was no evidence of any trade under the mark. Even in relation to the goods and services for which the opponents’ mark was registered there was very little evidence of its use as a trade mark.

As is well known Hercule Poirot is a well known character in the Agatha Christie series of books. The opponents claimed that in use the applicants have sought to evoke the style and character of the period in which the Agatha Christie books were set and this increases the likelihood of association with the opponents.

Under Section 5(4)(a) - Passing Off - the Hearing Officer could find little evidence to convince him that the opponents had traded under the mark POIROT. He accepted that there was some association between the name and the opponents because of the use of the name in Agatha Christie’s books and in associated films made from such books but that was different from a reputation as a trade mark in relation to goods and/or services. Opposition failed on this ground.

The lack of a reputation as a trade mark was also fatal to the opponents ground under Section 5(3).

Under Section 3(6) the opponents cast doubt on the applicants intention to use their mark in respect of the full range of goods within their specification. However, as no evidence was filed to support this claim it could not succeed.

The second leg of the objection under Section 3(6) was that the applicants must have known of the association between the mark and the opponents when they adopted it and applied for registration. While the applicants did not say why they had selected the mark the Hearing Officer was not convinced that its selection had been in bad faith and again there was a lack of evidence from the opponents to justify the claims made. Opposition thus failed on this ground.