Trade mark decision

BL Number

O/100/05

Decision date

18 April 2005

Hearing officer

Mr M Reynolds

Mark

BEN SHERMAN MERCHANDISING

Classes

35, 41

Applicant

Alan Sugarman

Opponent

Ben Sherman Group Limited

Opposition

Sections 3(6), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 3(6): - Opposition successful.

Section 5(2)(b): - Opposition partially successful.

Section 5(3): - Opposition successful.

Section 5(4)(a): - Not decided.

Points Of Interest

• 1. A very useful summary of the considerations appropriate in respect of Section 5(4)(a) - Passing Off.
• 2. The applicant appealed to the Appointed Person. In his decision dated 11 November 2005 (BL O/305/05) the Appointed Person dismissed the appeal but differed from the Hearing Officer in his considerations under Section 5(2)(b) and Section 3(6).

Summary

The opponent owns a number of registrations for the marks BEN SHERMAN and BEN SHERMAN (in script) in Classes 3, 16, 24 and 25. It also filed evidence of use over an extended period and with a significant turnover. The Hearing Officer accepted that the opponent had a significant reputation in relation to shirts and more recently there has been some extension of the business into other areas of the clothing market. Mr Ben Sherman commenced the opponent company in 1963 but left it some years ago. He is now deceased.

The applicant also filed evidence. Mr Sugarman is a member of the same family as the late Ben Sherman (it would appear that some members of the family changed their name to Sherman) and he appears to claim some rights in the name Ben Sherman. Indeed he offered to licence the mark in suit to the opponent company. In the mark in suit the words "Ben Sherman merchandising" are shown in almost identical script as that used by the opponent in its BEN SHERMAN marks.

Under Section 5(2)(b) the Hearing Officer accepted that the respective marks were very closely similar in view of the presence of the name BEN SHERMAN, the script writing used and the portrait of the late Ben Sherman. However, the only link between the goods of the opponent and the services of the applicant was printed matter in Class 16 which was similar to book and magazine publishing services in Class 41. Opposition under Section 5(2)(b) thus succeeded only in respect of these services.

Under Section 5(3) the Hearing Officer noted the opponent's significant reputation and the similarity of the respective marks. There was also the nature of the mark in suit to be considered particularly as it included the word "merchandising". There was little doubt that the public would associate the respective marks and the presence of the word "merchandising" would add to the association with the opponent even where the goods and services were not similar. The Hearing Officer went on to find that the opponent succeeded on this ground.

The Hearing Officer did not reach a concluded decision on the Section 5(4)(a) ground (in view of his decision under Section 5(3)) but he did consider the matter in detail and his review strongly suggests that if he had reached a decision on this ground, his decision would have been in favour of the opponent.

As regards the ground under Section 3(6), the Hearing Officer believed that the applicant must have been aware of the reputation of the Ben Sherman Group and their use and reputation in the script version of the BEN SHERMAN mark. That being the case the applicant must have been aware of possible conflict when he adopted the mark in suit and in particular use of the BEN SHERMAN name in script form. The whole mark which included the word "Merchandising" was calculated to convey an association with the Ben Sherman Group (the Opponent) when this was not the case. Opposition succeeded on this ground.