Trade mark decision

BL Number

O/080/04

Decision date

23 March 2004

Hearing officer

Dr W J Trott

Mark

OXFORD BLUE

Classes

25

Applicant for Invalidity

Oxford Limited

Registered Proprietor

HS Tank & Sons Limited

Invalidity

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

Result

Section 47(2) & 5(4)(a) - Invalidity action failed.

Points Of Interest

• 1. None

Summary

The applicants for invalidity claimed that they awarded an OXFORD BLUE for sporting achievement, the earliest use of the term being 1829. The award is recognized widely, both within the UK and internationally, and the applicant claimed that the reputation of this name, of which they claim ownership, extended to sporting articles and articles of sports clothing. However, in order not to tarnish the goodwill and reputation surrounding the term OXFORD BLUE, the applicant indicated that they had not promoted the term by way of merchandising.

The registered proprietor claimed to have adopted the mark in 1985 from the name of a horse at the Babminton Horse trials and turnover has been of the order of £4m per annum since that date. The proprietor stated that they have no knowledge of any confusion as to the source of their goods and submitted that in any event the applicant had been aware of their business from 1996.

Under Section 5(4)(a) – Passing Off – the Hearing Officer noted that the applicant had not used the term OXFORD BLUE in trade. It was merely a sporting accolade, albeit one which was very well known. Thus the applicant’s case must fail at the outset as it was essential tenet of passing-off law that there must be use in trade and a reputation and goodwill before a successful passing-off case could be launched. The application thus failed as the applicant had no protectable goodwill. Two other points were commented on by the Hearing Officer.

1. The registered proprietor claimed that the applicant had no title to bring the action. The Hearing Officer rejected this submission in view of the wording of Section 47 of the Act.

2. The registered proprietor also claimed acquiescence. The Hearing Officer noted the various submissions and arguments but was inclined to accept the applicant’s argument that action had been taken before the Community Trade Mark Office in 1999 which was only three years after it was claimed by the registered proprietor that the applicant had become aware of their activities. Therefore the claim of acquiescence was not accepted.