Trade mark decision

BL Number

O/120/04

Decision date

28 April 2004

Hearing officer

Mr Geoffrey Hobbs QC

Mark

MCQUEEN CLOTHING CO.

Classes

18, 25

Applicants/Appellants

Nicholas Stephen Croom t/a McQueen Clothing Co

Opponents/Respondents

Lee Alexander McQueen

Appeal to the Appointed Person against the decision of the Registrar’s Hearing Officer in opposition proceedings.

Result

Section 5(2)(b) - Hearing Officer’s decision set aside in respect of one of the Community Trade Mark applications.

Section 5(4)(a) - Hearing Officer’s decision set aside.

Request for stay of proceedings - Refused.

Request for reference to ECJ - Refused.

Points Of Interest

• 1. Specification of goods; applicant cannot identify these "negatively, by reference to the absence of attributes such as those (whatever they might truly be) of haute couture".
• 2. Comparison of marks; not to concentrate on similarities to the exclusion of differences.
• 3. Passing off; no basis in equity or common law on which junior user could deny right of senior user to make normal and fair use of the names and mark in question for goods of the kind specified in the opposed application.
• 4. Stay or proceedings pending outcome of possible invalidity proceedings before Community Trade Mark Office; presumption of validity of Community Trade Mark.
• 5. Reference to ECJ on stay of proceedings.

Summary

At first instance the Hearing Officer had found the opponent successful (provisionally) under Section 5(2)(b) and successful under Section 5(4)(a) (see BL O/387/02). The applicant appealed to the Appointed Person.

Reviewing the matter under Section 5(2)(b) the Appointed Person took first the objections based on the opponent's Community Trade Mark application for the mark ALEXANDER McQUEEN. In this he found that the Hearing Officer had concentrated on the similarities to the exclusion of the differences between the marks in question. In this case the difference was significant and should have resulted in a finding that there was no likelihood of confusion.

In the case of the second Community Trade Mark application for the mark McQueen stylised, the Hearing Officer had been right to uphold the objection to registration.

Under Section 5(4)(a) the Appointed Person after reviewing the law and the evidence concluded that he could "see no basis in equity or at common law on which the opponent (as junior user) could have denied the right of the applicant (as senior user) to make normal and fair use of the name and mark in question for goods of the kind specified in the opposed application."

The Appointed Person then turned to consider a request by the applicant that the Hearing Officer's decision be stayed in so far as it related to the Community Trade Mark application. They intended to bring an invalidity action before the Community Trade Mark Office were it to proceed to registration.

Prior to the hearing in the Registry the applicant had been asked if they wished proceedings to be suspended until the fate of the Community Trade Mark application was known and they had declined.

Having reviewed the matter, however, in the light of the relevant Community Trade Mark law and the facts in this case the Appointed Person found, in effect, that it was not open to national courts and tribunals to treat a Community Trade Mark registration as provisional. The fact of a Community Trade Mark registration would have to determine the outcome in these proceedings whatever the eventual fate of that registration.

The applicant asked that this be referred to the ECJ as it raised questions as to the interpretation of the Regulation (and perhaps also the Directive) that were not acte clair. The Appointed Person stated that his decision had not been 'solely or primarily' based on the meaning and significance of those provisions; moreover, it was procedural and discretionary in character. The interests of the parties were better served by certainty than by prolonged uncertainty. The request for referral to the ECJ was refused.

In the result, therefore, the Hearing Officer’s decision was set aside save in so far as it provided for refusal of the application if and when the Community Trade Mark application proceeded to registration. The Hearing Officer's order for costs was also set aside; the parties could apply to the Registrar for a fresh order in the light of the eventual outcome. The request for stay of proceedings pending the outcome of a possible invalidity action before the Community Trade Mark Office was refused and the request for this to be referred to the ECJ was also refused.

Each party to bear its own costs in respect of the present appeal.