Trade mark decision

BL Number

O/063/04

Decision date

9 March 2004

Hearing officer

Mr D Landau

Mark

BATTERSEA POWER STATION

Classes

35, 39, 41, 42

Applicant

Parkview International London Plc

Opponent

Battersea Power Station Company Limited* *(BPSCL took over the opposition from Battersea Power Station Community Group)

Opposition

Sections 3(1)(c); 3(1)(d) & 5(4)(a)

Result

Section 3(1)(c) - Opposition failed

Section 3(1)(d) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• 1. Geographical indications; name of a building : private property
• 2. Goodwill : ownership by unincorporated bodies.

Summary

The matters to be decided were summarised by the Hearing Officer as i) whether, at the date of application, BPSCG (BPSCL did not exist at that date) had rights which could prevent the use of the mark applied for under the law of passing off, and ii) whether registration of the mark would be contrary to Section 3(1)(c), as it was a geographical location, or contrary to Section 3(1)(d) as the words had “become customary in the current language”. The Hearing Officer dealt with the latter point first. There was no evidence, he decided, to the effect that the mark was a term that was customarily used in relation to the services specified, “what (was) often referred to as a term of the art”. The Section 3(1)(d) objection was dismissed accordingly.

Under Section 3(1)(c) the Hearing Officer concluded that even if the mark defined a geographical location, as it did in a literal sense, it could not be held to be a geographical origin for the services specified such that other undertakings would have need of it as a sign for their services. The site was private property, outside the public domain; a matter between the owners and those who might wish to use it. This ground too was dismissed.

Under Section 5(4)(a) the Hearing Officer had first to decide if BPSCG (BPSCL did not exist at the material date) could as an unincorporated body own a goodwill, if such existed. In this, it seemed, they could own a goodwill and there was evidence of some such existing as a result of their campaigning activities in the signs ‘BPSCG’ and ‘Battersea Power Station Community Group’. However, the Hearing Officer could not find any likelihood that the public would be deceived, neither had the opponents been able to show that any of the relevant forms of damage would arise. The opposition failed accordingly.