Trade mark decision

BL Number

O/144/03

Decision date

29 May 2003

Hearing officer

Mr M Foley

Mark

DIXY FRIED CHICKEN

Classes

29

Applicant for Invalidity

Dixy Fried Chicken (Stratford) Ltd

Registered Proprietor

Dixy Fried Chicken (Euro) Ltd

Invalidity

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

Result

Section 3(1)(a) - Invalidity action failed.

Section 3(1)(d) - Invalidity action failed.

Section 3(6) - Invalidity action failed.

Section 5(4)(a) - Invalidity action successful

Points Of Interest

• 1. A very confusing case with less than perfect evidence.

Summary

The applicants for invalidity claimed that they and their predecessors had carried on a business under the name Dixy Fried Chicken from as early as 1986 and this business has continued up to the present time.

Mr Abid Mahmood, joint Managing Director of the registered proprietors claimed that up until 1986 he had operated a Kentucky Fried Chicken Franchise but he decided to form his own business using the name Dixy Fried Chicken. A company was formed, Dixy Fried Chicken (GB) Ltd, and it would appear that the intention was to grant franchises to use the name. One of the predecessors of the applicants’ for invalidation was a shareholder and director of Dixy Fried Chicken (GB) Ltd and there has been a dispute between the parties for some time and indeed at one stage he opposed registration of the mark in suit. He withdrew that opposition with an admission that the current proprietors were the true owners of the mark. In the mid 1990s Dixy Fried chicken (GB) Ltd went into liquidation and while a new company was formed, Dixy Fried Chicken (Euro) Ltd, the present proprietors, there was no evidence before the Hearing Officer to suggest that the assets and goodwill in the name DIXY had passed to the new company.

The Hearing Officer noted that the evidence filed in these proceedings was less than perfect and that he would have benefited from cross examination of the parties. However, that was not an option. The situation was further confused by earlier proceedings and by some declarants apparently changing sides during the course of the proceedings.

Under Section 3(1)(a) the Hearing Officer did not see any reason why DIXY could not function as an indication of origin. It might suggest a connection with cooking associated with the Southern states of the USA but no more than that. It was certainly not descriptive.

Under Section 3(1)(d) the Hearing Officer noted from the evidence that a number of businesses appeared to use the name DIXY FRIED CHICKEN or something similar as a trading style but he did not think that the term had become customary in the current language of the trade. Opposition thus failed on these two grounds.

As regards the ground under Section 5(4)(a) – Passing Off – the Hearing Officer accepted that the applicants had established a continuing interest in the mark DIXY FRIED CHICKEN from 1986 onwards. As the current proprietors had not acquired the goodwill and assets of the earlier company Dixy Fried Chicken (GB) Ltd, the Hearing Officer concluded that the applicants had the earlier right and that they succeeded on this ground since both parties were in the same line of business and trading in the same area.