Trade mark decision

BL Number

O/350/04

Decision date

25 November 2004

Hearing officer

Mr D Landau

Mark

THIS IS LONDON

Classes

16

Applicant

Julie Jones

Opponent

Associated Newspapers limited

Opposition

Section 5(1)

Result

Section 5(1) - Opposition successful

Points Of Interest

• 1. A person owning a company and the company itself are separate legal entities.

Summary

The mark in suit was applied for by Ms Julie Jones on 30 November 2001. Ms Jones is Managing Director of This Is London Magazine Limited (hereafter referred to as TILML) and is sole owner of the assets of that company. This company publishes a magazine called THIS IS LONDON and following an earlier dispute with the current opponents Associated Newspapers Limited (hereafter referred to an ANL) a co-existence Agreement dated 1 December 1997 was entered into by the two parties. This agreement allowed ANL to register and use an internet web site www.thisislondon.com to publish news electronically.

ANL registered THIS IS LONDON as a Community Trade Mark on 30 May 1997 in a range of Classes including Class 16. It is this mark which forms the basis of this opposition.

Ms Jones applied to register the mast head of the magazine "This is London" (slightly stylised) on 23 January 1998 in class 16 and ANL consented to that registration. At that time it did not differentiate between Ms Jones and her company TILML which are of course separate legal entities. There was no agreement between Ms Jones and ANL nor does Ms Jones publish the magazine THIS IS LONDON. That magazine is published by TILML who own the rights in the title.

In these proceedings the Hearing Officer established that ANL had a prior registered sight of an identical Community mark. A claim to protection from the effects of opposition by Article 53(3) and acquiescence was flawed on the basis of who owned the prior rights and the Hearing Officer found that ANL’s opposition was successful.