Trade mark decision

BL Number

O/280/03

Decision date

16 September 2003

Hearing officer

Mrs A Corbett

Mark

FAIRLIGHT

Classes

34

Applicant

Axel E Hertlein

Opponent

Rothmans of Pall Mall Limited (London) & Rothmans of Pall Mall Limited (Switzerland)

Opposition

Sections 3(6) and 5(4)(a)

Result

Section 3(6) - Opposition failed.

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

Points Of Interest

• 3. See award of costs decision by the Appointed Person dated 24 March 2005 (BL O/181/05)
• 1. An unusual case in that there was no relevant objection to the mark applied for but objection as to how it might be used.
• 2. The opponents appealed to the Appointed Person and the Registrar asked that the appeal be referred to the High Court. In his decision dated 3 March 2004 (BL O/123/04) the Appointed Person referred the appeal to the High Court.

Summary

The opponents opposition was based on the fact that their ROTHMANS mark has been used for many years with the same get-up and that they have a substantial reputation in both elements. Recently the applicant has advertised his FAIRLIGHT cigarettes as ROTHMANS look-alikes on the internet and used similar get-up and packaging. Action has been taken against the proprietor in the German and Austrian Courts. The opponents claimed that registration would facilitate the applicant in his unlawful activities.

The Hearing Officer noted that the applicant had applied to register the mark FAIRLIGHT solus and that this mark was not similar to ROTHMANS. Normal and fair use of the mark applied for would not include other matters such as get-up as this was not part of the mark applied for. Thus the opponents must fail under Section 5(4)(a) but this of course does not restrict them in any way if the mark applied for is used in relation to look-alikes etc. For similar reasons the ground under Section 3(6) also failed.