Trade mark decision

BL Number

O/460/02

Decision date

12 November 2002

Hearing officer

Mr M Reynolds

Mark

Michael Van Clarke Great Hair Days

Classes

03, 42

Applicant

Michael Evangelus Clarke (t/a Michael Van Clarke)

Opponent

Nicholas Andrew Clarke, Lesley Anne Gale Clarke & Kasmare Limited

Opposition

Sections 3(6), 5(2)(b) & 5(4)(a)

Result

Section 3(6) - Opposition failed.

Section 5(2)(b) - Opposition failed.

Points Of Interest

• 1. Applicants name – What information is required.
• 2. The opponents appealed to the Appointed Person. In his decision dated 9 June 2003 (BL O/154/03) the Appointed Person rejected the appeal and upheld the Hearing Officer’s decision on all three grounds.

Summary

One of the joint opponents in these proceedings is the applicant’s brother and has a widely recognised reputation in the hairdressing field. The opponents also own a number of registrations for the mark NICKY CLARKE (and variations thereof) in Classes 3 and 42.

Under Section 3(6) the opponents claimed that there was no such person as Michael Van Clarke since the applicants given name was Michael Evangelus Clarke. Thus as there was no proper applicant there could be no intention to use and the application should be refused. The applicant claimed that he had used the name Michael Van Clarke for many years and there had been no intention to mislead. In any event he filed a Form TM21 to reflect his Christian names in full. The Hearing Officer noted that the requirement in making an application was to identify the applicant. There was no doubt in this case that this had been achieved. It was well known that applicants sometimes used full names, abbreviations of Christian names or even initials. As long as the identity of the applicant was clear, and the address given also played a part in this, then there was no grounds for objection. In the light of this view and the details of the applicant’s existing trade supplied by way of evidence, the Section 3(b) ground was dismissed.

Under Section 5(2)(b) the Hearing Officer noted that CLARKE was a common surname and he took this into account in comparing the marks NICKY CLARKE and MICHAEL VAN CLARKE. In short the Hearing Officer considered that there was no risk of confusion and that objection on this ground also failed.

With regard to Section 5(4)(a) – Passing Off – the Hearing Officer found that the opponents were on no stronger ground as compared to Section 5(2)(b) since they had filed no evidence to substantiate a claim to have a reputation in the name CLARKE solus. The opponents reputation was in the name NICKY CLARKE and as this name was not confusingly similar to the applicant’s mark this ground also failed.