Trade mark decision

BL Number

O/408/02

Decision date

14 October 2002

Hearing officer

Mr M Reynolds

Mark

ROCKFORD

Classes

25

Applicant for Invalidity

Rockport (Europe) BV

Registered Proprietor

Terence Ball

Invalidity

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

Result

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

Sections 47(2)(a) & 5(2)(b): - Invalidity action failed.

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

Points Of Interest

• 1. An application to file additional evidence at the hearing was allowed by the Hearing Officer. This related to the registered proprietor’s use of the mark TIMBERLAKE which is somewhat similar to TIMBERLAND.
• 2. See also BL O/406/02 and BL O/407/02.

Summary

The applicants for invalidity based their application on ownership of a number of registrations of the mark ROCKPORT in Class 25 in respect of the same and similar goods as those of the registered proprietor. They also filed details of significant use of their mark from 1992 onwards but the Hearing Officer was not persuaded, in the context of Section 5(2)(b), that this supported a claim to enhanced distinctiveness of the applicant’s mark ROCKPORT.

The applicants also filed other evidence about the fact that ROCKFORD and ROCKPORT shoes were sold side by side; hearsay evidence that ROCKFORD shoes were a direct copy of ROCKPORT shoes and a claim that the registered proprietor used the names of American states as sub-brands. The applicants also claimed to do this and submitted that this increased the likelihood of confusion.

The registered proprietor said in his evidence that he had adopted the ROCKFORD mark in 1992 because he had been a fan of the television series "The Rockford Files" and liked the name. Trade under the mark had continued since that date in respect of surplus stock which had to be re-branded. Some surplus stock was sold with original brand names attached. In or about 1995 more goods bearing the ROCKFORD mark had been manufactured in order to develop the wholesale side of the business. Other brands had also been used such as FOOT LOVERS and TOMMY FISH and the registered proprietor claimed that other firms used the names ROCKWOOD and ROCKFALL. An application to register ROCKFORT had been made to increase the protection around ROCKFORD but this application had been withdrawn when opposition had been entered by the applicants in these proceedings.

Under Section 5(2)(b) identical goods were at issue so the Hearing Officer compared the marks ROCKPORT and ROCKFORD and device. Conceptually the Hearing Officer thought that ROCKPORT would be seen as a place name and ROCKFORD as a surname or place name. Visually and aurally, however, the Hearing Officer decided that the marks were different and that the public were unlikely to be confused. Invalidation failed on this ground.

Under Section 5(4)(a) - Passing Off - the opponents relied to a significant extent on a claim that the registered proprietor used the name of American States as sub-brands. This they claimed imitiated their use of such names in a similar fashion. The registered proprietor said the names were on the goods when he got them from suppliers of surplus stock and he was not aware of the applicants use. The Hearing Officer noted the applicants claim but there was in fact no evidence that they had used the names of American States as sub-brands in the UK as the only brochure provided was dated 1999 and appeared to be for the American Market. While the registered proprietor’s explanation was not wholly convincing the Hearing Officer decided that the applicants had not made out this additional ground under Section 5(4)(a).

Given his decision under Section 5(2)(b) where he found that the respective marks were not confusingly similar the Hearing Officer concluded that the applicants must also fail in their ground under Section 5(4)(a).

The applicants ground under Section 3(6) was based on a number of factors as follows:

The abandoned attempt to register ROCKFORT.

The registration of ROCKFORD.

The use of sub-brands in imitation of the applicants practice.

The selling of alleged copies and the display of ROCKFORD shoes alongside ROCKPORT shoes.

The use of other marks such as TIMBERLAKE - similar to the well known TIMBERLAND mark.

Having considered the matter the Hearing Officer decided that the collective claims taken individually had insufficient weight; were not adequately substantiated; and/or were inconclusive. With some reservations about the registered proprietor’s behaviour the Hearing Officer concluded that the applicants failed in their ground under Section 3(6).