Trade mark decision

BL Number

O/216/03

Decision date

31 July 2003

Hearing officer

Mr D Landau

Mark

CARS DIRECT

Classes

35, 39

Applicant for Invalidity

Saga Leisure Limited

Registered Proprietor

Cars Direct Group Ltd

Invalidity

Section 47(1) based on Section 3(1)(b) & (c)

Result

Section 47(1) based on Section 3(1)(b) & (c): - Application for invalidity successful.

Points Of Interest

• Relevant dates to be considered in relation to a registered proprietor who has filed evidence to show acquired distinctiveness. Hearing Officer decided such dates should be the date of application and the date of the hearing of the proceedings.

Summary

This is one of a set of three proceedings between the same parties which, while not consolidated, were all dealt with at the same hearing. See also BL O/217/03 and BL O/218/03.

The applicants filed evidence from trade mark and internet searches in an effort to show that the words CARS and DIRECT nor the combination CARS DIRECT have any distinctive character in relation to the services at issue.

The registered proprietor (CDGL) filed evidence of extensive use from 1989 onwards and also referred to advertising which had been carried out. The firm are involved in the re-marketing of cars by way of auction and they act on behalf of a number of well known companies as regards the sale of their fleet cars.

The applicants filed extensive evidence in reply. This consisted of a critical analysis of the evidence provided by CDGL and evidence from people in the trade. What this evidence showed was that the turnover figures of CDGL were no-where near as large as claimed. In effect they had included the value of cars sold at auction whereas their income was only in respect of commission as they in fact never owned the cars – they merely sold them. Secondly the trade evidence showed that CDGL were not nearly as well known as claimed and, in effect, they accounted for only a very small percentage of the car resale market. The filing of disclosure documents (subject to a confidentiality order) and the cross-examination of Mr Johnson, who represented the registered proprietor, confirmed the applicants criticism of the registered proprietor’s evidence.

Taking an overall view of the evidence before him the Hearing Officer concluded that the evidence did not show that the mark in suit had acquired a distinctive character either at the date of filing of the application for registration or at the date of the hearing of the proceedings.

The Hearing Officer then went on to consider whether or not the mark CARS DIRECT was objectionable under Section 3(1)(b) and (c) of the Act when it was applied for in 1995. As the mark had proceeded on the basis of evidence of use to support the application and as that evidence had been found wanting in these proceedings the Hearing Officer concluded that even at that date it would have been seen as descriptive/non-distincitve in relation to the sale of cars direct to the public. He thus concluded that the mark in suit should be declared invalid and deemed never to have been made.