Trade mark decision

BL Number

O/172/03

Decision date

24 June 2003

Hearing officer

Mr A James

Mark

OUR PEOPLE MAKE THE DIFFERENCE

Classes

16

Applicant

Wal-Mart Stores Inc

Opponent

Tesco Stores Limited

Opposition

Section 3(1)(b) & (c)

Result

Section 3(1)(b): - Opposition successful.

Section 3(1)(c): - Opposition failed.

Points Of Interest

• A useful case in considering slogan marks.

Summary

The opponents claimed that the mark in suit was without distinctive character and that it was in common use to indicate kind, quantity, quality etc. They filed no evidence to support this latter claim and the Hearing Officer concluded that their opposition must fail under Section 3(1)(c).

As regards Section 3(1)(b) the applicants claimed to have used this mark in the USA from 1979 and registration was achieved in the USA in 1989, apparently with the support of the earlier use. They had no use of the mark in the UK at the relevant date.

The opponents filed details of other slogans used by supermarkets and other retailers but were unable to show that others used this particular slogan. However, they argued that the public would just see it as another slogan and not as an indication of origin of goods and particularly goods such as printed matter which are used for the promotion and advertising of goods.

The Hearing Officer considered the matter carefully, taking full account of the guidance available from earlier proceedings. However, in this case he considered that in his judgement the relevant customer on seeing the mark in suit on goods would see it purely as a promotional message extolling the quality of staff in the business rather than an indication of origin. Opposition thus succeeded on this ground.