Trade mark decision

BL Number

O/065/05

Decision date

14 March 2005

Hearing officer

Mr D Landau

Mark

ASHOKA KARAOKE

Classes

41, 43

Applicant

Harlequin Leisure Group Limited

Opponent

Spicewell Limited

Opposition

Sections 3(1)(b); 3(1)(c); 3(3)(b); 3(6), 32, 39(2) & 39(3).

Result

Section 3(1)(b): - Opposition failed.

Section 3(1)(c): - Opposition failed.

Section 3(3)(b): - Opposition failed.

Section 3(6): - Opposition failed.

Sections 32 & 39: - Opposition failed.

Points Of Interest

• 1. Errors in form of application: "I consider that a balance has to be achieved between an extremely purist line in relation to procedural punctiliousness and obvious, and I use that word deliberately, intent and effect."

Summary

The original applications had been for a series of marks. This had been mistakenly described on the form as a series of two marks but had been recorded in the Registry's data base as a series of four marks. Subsequently the applicant had deleted three of the marks. The opponent raised objections under Sections 3(6) 32 & 39 of the Act, claiming, inter alia, that the amendment was invalid.

The Hearing Officer, after a careful review of the sequence of events, agreed that the case raised issues as to how the series of trade marks should be delineated on the application form, so as to avoid ambiguity. However, there had actually been no ambiguity. Rejection of the application on the grounds raised would be "captious". Nor could it be shown that bad faith had been involved. These grounds were dismissed.

A second ground under Section 3(6) was raised, by which it was alleged, in effect, that the applicant was seeking a monopoly in common words. Of course it was, ruled the Hearing Officer, since that was the purpose of a trade mark application. It did not indicate bad faith. A further ground under Section 3(6) was attempted to be raised in the submissions and skeleton argument, relating to the breadth of the specification, but this was ruled out of order by the Hearing Officer as it had not been foreshadowed in the statement of grounds.

The Section 3(1)(c) ground was quickly dismissed as the Hearing Officer could see, and the applicant's representative could point to, no precise objection under that head.

Under Section 3(1)(b) the Hearing Officer had to consider that KARAOKE was devoid of distinctive character (which it clearly was in relation to services that could include karaoke), that ASHOKA was the name of an ancient Indian king and that the word ASHOKA was used by five other Indian restaurants.

In the result, the Hearing Officer did not consider that ASHOKA on its own was devoid of distinctive character and hence the mark as a whole could not be so regarded.

Finally, the Hearing Officer considered and dismissed the ground of opposition under Section 3(3)(b)