Trade mark decision

BL Number

O/213/03

Decision date

29 July 2003

Hearing officer

Mr M Reynolds

Mark

TOYS AREN'T US

Classes

16, 36, 41, 42

Applicant

National Canine Defence League

Opponent

Geoffrey Inc

Opposition

Sections 3(6); 5(3) & 5(4)(a)

Result

Section 3(6) - Opposition successful.

Section 5(3): - Opposition successful.

Section 5(4)(a) - Opposition failed.

Points Of Interest

• 1. "Without due cause" (Section 5(3)); 'charitable' activities; so 'block exemptions'; defence to be assessed on its own facts.
• 2. 'Bad faith'; disregard for consequences; standards of acceptable commercial behaviour.

Summary

The opponents were proprietors of a number of UK and Community Trade Mark registrations of such marks as 'R' US, TOYS 'R' US etc.

The Hearing Officer dealt first with the Section 5(3) objections. Following a careful review of the matter the Hearing Officer came to the view that simply by adopting the mark in issue the applicants would cause the damage to the opponents’ mark that Section 5(3) was intended to prevent. The mark, and the message behind the mark, would be inextricably linked to the activities campaigned against, he felt. The Hearing Officer went on to examine a possible defence under the 'due cause' aspect. It was submitted that all charitable use is “with due cause”. There were a number of difficulties with this submission, mostly due to the obscurity of the applicants activities and status, occasioned by the absence of evidence. Also, there was nothing in the legislation to suggest that any such 'block exemption' was intended for charities; the matter had to depend in each case on its own particular facts (Lucas Bols [1976] I.I.C 420, Benelux).

Secondly, it was submitted that minor damage could be more easily held to be 'with due cause', than more serious damage; it was a question of degree. Also, the better the cause, the more readily the defence should be accepted. Again, the Hearing Officer rejected the notions that there was a separate test for charities. The applicants had to establish their own case, and this they had failed to do. The Section 5(3) objection succeeded accordingly.

The objection under Section 3(6) succeeded too, since the applicants had adopted the mark without considering the possible effects on the opponent'’ business; this disregard for consequences fell short of the standards of acceptable commercial behaviour, said the Hearing Officer.

Under Section 5(4)(a), however, the Hearing Officer found no likelihood of misrepresentation.