Trade mark decision

BL Number

O/256/04

Decision date

30 July 2004

Hearing officer

Professor Ruth Annand

Mark

TESCO WE SELL FOR LESS

Classes

32

Applicant

Tesco Stores Limited

Opponent

Asda Stores Limited

Cross Appeals to the Appointed Person against decisions of the Registrar’s Hearing Officer in opposition proceedings.

Result

Applicant’s appeal against Section 3(6) finding upheld.

Opponent’s cross-appeal dismissed.

Applicant’s appeal against refusal to allow consolidation of proceedings dismissed.

Points Of Interest

• 1. Bad faith; bona fide intention to use as a trade mark.
• 2. Scope of Section 3(6).
• 3. Section 32(3) : compatibility with Community Law.
• 4. Consolidation of proceedings.
• 5.. Registrability of marks in relation to retail services.

Summary

At first instance (see BL O/361/03 & BL O/362/03) the opponent had, under Section 3(6), alleged: (i) that the applications had been made in bad faith because the applicants had made the applications purely as a “spoiling tactic” and (ii) the applicant had had no valid intention of using the marks as trade marks. The Hearing Officer had dismissed the first of these allegations but upheld the second, and the applications were refused accordingly.

The applicant appealed to the Appointed Person against the latter finding. The opponent cross-appealed against the first finding, claiming that the Hearing Officer had erred in not adopting the same approach as the Registrar’s Hearing Officer in the opposition to the mark TESCO PEOPLE MAKE THE DIFFERENCE – BL O/043/02.

The applicant also appealed against the Hearing Officer’s refusal to consolidate the proceedings or to admit further evidence.

The Appointed Person dealt first with the applicant’s appeal on the substantive matter and having reviewed the matter concluded that the Hearing Officer had erred in finding that the applications had been made in bad faith.

Turning to the matter of the cross-appeal, which was directed at the unstylised mark only, the Appointed Person found a number of features which distinguished the instant case from that set out in BL O/043/02; matters occurring after the filing date supported the applicant’s claim that there had been an intention to use the mark. Professor Annand concluded the Hearing Officer had not erred by not adopting the approach of the Hearing Officer in BL O/043/02, and opponent’s cross-appeal failed accordingly.

Finally, the Appointed Person found that the Hearing Officer had acted entirely reasonably in not allowing the consolidation of proceedings and thus the admissions of evidence filed in one set of proceedings into the other set of proceedings.