Trade mark decision

BL Number

O/306/06

Decision date

24 October 2006

Hearing officer

Mr M Reynolds

Mark

CARSTAR

Classes

12, 37, 39

Applicant

Carstar Automotive Limited

Opponent

Carstar Automotive Inc

Opposition

Sections 3(6) & 56

Result

Section 3(6): Opposition failed. Section 56: Opposition failed.

Points Of Interest

• None

Summary

The opponent in these proceedings has franchised a chain of car repair centres under the name CARSTAR in the USA and Canada from 1980 onwards. Turnover in the USA amounts to some $300 million per annum and in Canada to over Can $100 million.

The opponent does not have any franchises or other business operations in the UK but it states that discussions took place in May 2004 with a company associated with the applicant about the possibility of a joint business venture in the UK with the aim of extending the CARSTAR franchise into the United Kingdom. Information was exchanged about business models, especially the arrangements between the applicant group of companies and the Norwich Union Insurance Company. The application in suit was filed on 3 July 2004.

The applicant disputes the opponent’s version of events. It states that it first registered CARSTAR Limited as a company name in 1995 and variations of that name were registered in the period 1995 to 2002. The applicant company was registered in 1997. The applicant disputes the claim that CARSTAR might be used in the UK by the USA/Canadian company and claims that the discussions were about, essentially, its business model and its working arrangements with the insurance industry.

Under Section 3(6) the Hearing Officer concluded that a fair view of the evidence indicated that there had been some discussions about a business arrangement between the parties but its purpose was not clear and had obviously not proceeded. While the applicant group had registered the CARSTAR name as a limited company it had not been used as a trade mark for any of the applicant’s repair businesses. However, it appeared to be well known by companies with whom the applicant dealt, that Carstar Automotive sat behind the arrangements with Norwich Union, Porsche and Mercedes. The applicant also claims that it intended to use the CARSTAR name for the Mercedes contract but eventually another name was selected. In all the circumstances the Hearing Officer did not believe that the applicant acted in bad faith when it applied to register its mark; merely commercial prudence. Opposition dismissed on this ground.

As regards the ground under Section 56 there was little evidence so show that the opponent’s mark was known in the UK. Consequently this ground also failed.