Trade mark decision

BL Number

O/370/04

Decision date

17 December 2004

Hearing officer

Mr J MacGillivray

Mark

ROYALE STRATFORD

Classes

21

Applicant for Invalidation & Revocation

Royal Stafford Tableware Limited

Registered Proprietor

Bloor Potteries Limited

Invalidation

Section 47(2)(a) & (b) based on Sections 5(2)(b) & 5(4)(a) Section 47(1) based on Sections 3(3)(b) & 3(5) Section 47(1) based on Section 4(1)(b)

Result

Sections 47(2)(a) & (b) based on Sections 5(2)(b) & 5(4)(a): - Invalidation successful in respect of "Dinnerware"

Section 47(1) based on Sections 3(3)(b) & 3(5): - Invalidation action failed.

Section 47(1) based on Section 4(1)(b): - Ground dismissed.

Points Of Interest

• 1. None

Summary

The applicant's attack on the registered mark was based on its ownership of a registration in Class 21 of the mark ROYAL STAFFORD in respect of the same and similar goods as those of the registered proprietor. It also filed evidence of use commencing in 1845 with more detailed evidence of use relating to more recent times, particularly in relation to tableware. In connection with one of its grounds, the applicant filed evidence to show that the registered proprietor used its mark with a crown device, which resembled the Royal Crown.

The registered proprietor also filed evidence of use from 1991 onwards and claimed honest concurrent use and acquiescence on the part of the applicant, who had been aware of its trading activities for some time. Close examination of this evidence by the Hearing Officer established that the registered proprietor had used its mark on decorative items of pottery for many years and use on dinnerware had only commenced in 2002. It was clear, therefore, that the registered proprietor could not benefit from the honest concurrent use or acquiescence provisions in relation to its whole specification.

Under Section 5(2)(b) the Hearing Officer compared the respective marks ROYALE STRATFORD and ROYAL STAFFORD and concluded that they were visually, aurally and conceptually similar. As the respective goods, dinnerware, were identical the Hearing Officer concluded that there was a likelihood of confusion and that the invalidation attack succeeded in respect of "dinnerware".

In view of his decision under Section 5(2)(b), the Hearing Officer saw no need to consider the ground under Section 5(4)(a) as he considered that the applicant was in no better position in relation to that ground.

With regard to the objection under Section 4(1)(b) the Hearing Officer observed that as the mark in suit did not incorporate a device of a Royal Crown normal and fair use could not include such a device. Ground dismissed.

Turning to the ground under Sections 3(3)(b) and 3(5) the Hearing Officer considered the claims made by the opponent to be somewhat fanciful. The presence of the word ROYAL does not necessarily indicate royal patronage and this is made clear in guidance from the courts which is incorporated into the Registry's Manual. In this case the word is in fact ROYALE which is the French form of ROYAL and the Hearing Officer believed that this would make it even less likely that the public would assume any royal connection. The ground under Sections 3(3)(b) and 3(5) therefore failed.