Trade mark decision

BL Number

O/150/03

Decision date

4 June 2003

Hearing officer

Mr M Reynolds

Mark

RED LETTER

Classes

09, 14, 16, 18, 21, 22, 25, 26, 33, 36, 39, 41, 42

Applicant

Red Letter Days Plc

Opponent

Redenvelope Inc

Opposition

Section 3(1)(b)

Result

Section 3(1)(b) - Opposition failed

Points Of Interest

• 1. Costs increased because of additional work created by opponents who listed other grounds which were not pursued

Summary

The opponent’s opposition quoted a number of other grounds and they filed evidence in support of those grounds. However, only the objection under Section 3(1)(b) was pursued on the basis that the mark lacks distinctive character since it is in effect a well known term “Red Letter Day” which is used to indicate a special event. Indeed in information before the Hearing Officer it was clear that this claim was reinforced by the applicants’ method of use of their mark where “Red Letter Days” was frequently referred to.

The Hearing Officer accepted that the mark had some significance in relation to the applicants’ core activities of providing gift experience services but the mark was allusive rather than descriptive and he therefore accepted that it was capable of acting as an indication of origin, not only for the core services on offer but also associated goods which might be provided as gifts. Opposition thus failed on a prima facie basis.

The Hearing Officer went on to consider the evidence of use filed by the applicants in support of their application. This covered a period of some ten years and had been accompanied by extensive advertising. The Hearing Officer accepted that the marks applied for were factually distinctive in relation to the applicants core activities but was less certain in relation to the associated goods for which registration was sought. If he had not accepted the mark in the prima facie he would have accepted it only for Classes 41 and 42 on the basis of the evidence filed and refused registration for the goods classes.