Trade mark decision

BL Number

O/125/03

Decision date

1 May 2003

Hearing officer

Mr Geoffrey Hobbs QC

Mark

DIANA, PRINCESS OF WALES MEMORIAL FUND

Classes

03, 04, 09, 12, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 32, 33, 34, 35, 38, 39, 41, 42

Applicants/Respondents

The Estate of the late Diana Princess of Wales

Opponents/Appellants

Franklin Mint Company

Appeal to the Appointed Person against the decision of the Registrar’s Hearing Officer in Opposition Proceedings

Result

Appeal dismissed

Points Of Interest

• 1. Names of Charities
• 2. Perceptions of average consumers could not fairly be disregarded on the ground that they were ‘unanalytical’.

Summary

At first instance (see BL O/037/02) the opponents had cited grounds under Sections (1), 3(1)(a), 3(1)(b), 3(1)(c), 3(1)(d) and 3(6). These were all rejected by the Hearing Officer. On appeal to the Appointed Person the opponents confined their attack to Sections 3(1), (b) 3(1)(c) and 3(6).

In relation to Sections 3(1)(b) and 3(1)(c) the opponents contended that it was open to anyone to set up a memorial fund in memory of the late Princess, and goods or services marketed in relation to that fund would naturally be so designated; (there was such a fund in New Zealand, for example). Moreover, the present mark did not differ distinctively from the shorter form DIANA PRINCESS OF WALES, which had already been refused by the Registrar (see [2001] ETMR 254). The Appointed Person stated that these objections had to be assessed by reference to the perceptions of the average consumer at the relevant date. People seemed to have treated it as self evident that the Fund somehow represented the deceased Princess.

The perceptions of such consumers, he held, could not fairly be disregarded on the ground that they were ‘unanalytical’; consumers would not normally engage in the process of analysis required to arrive at the conclusion that the wording of the designation is simply descriptive. Such analysis, he said, was in any case largely superfluous in the light of the statutory protections afforded to the names of charities. These factors were enough to satisfy the requirements of distinctiveness, he found.

There, was in the evidence, support for the view that the designation could not be regarded as simply descriptive in the hands of an undertaking that could properly claim priority in a particular territory.

The Appointed Person concluded that the designation was sufficiently distinctive as to be free of objection under Sections 3(1)(b) and 3(1)(c). This finding applied to both applications.

The opponents’ scepticism concerning the intentions of the fund as to the manner in which the mark would be used, in particular the doubt that it would indicate the existence of a producer/supplier connection was not enough to justify a finding of bad faith under Section 3(6), and this ground failed also.