Trade mark decision

BL Number

O/274/03

Decision date

9 September 2003

Hearing officer

Mr D Landau

Mark

CUBANA

Classes

42

Applicant for Invalidity

Cubana Cafe Limited

Registered Proprietor

Cubana Limited

Invalidity

Section 47(2) based on Section 5(4)(a)

Result

Section 47(2) based on Section 5(4)(a) - Application partially successful.

Points Of Interest

• 1. None

Summary

The applicants claimed to have operated a restaurant at Waterloo, London from May 1998 onwards under the name CUBANA and device of a letter C on a red star background and to have owned the website name www.cubana.co.uk from March 1998. They filed evidence of use of their mark and some local promotion of their restaurant.

The registered proprietors commenced to use their mark about October 2000 in relation to a restaurant in Sheffield; they applied to register the mark in February 2001 and registration was affected on 5 October 2001. They claimed to have no knowledge of the opponents when they adopted their mark. Indeed it would appear that the applicants only became aware of the registered proprietors when a friend of the owner of the applicants visited Sheffield and noticed the mark in suit being used as the name of a restaurant.

The Hearing Officer decided that the applicants had priority of use of the mark CUBANA but that they had at best only a local goodwill. There was no evidence of any confusion between the two restaurants at the relevant date (the date of application of the mark in suit) as neither had a national goodwill.

Taking an overall view of the matter the Hearing Officer found the applicants successful but indicated that the registered proprietors could retain their registration if they agreed to geographically restrict their specification to the County of South Yorkshire.