Trade mark decision

BL Number

O/154/07

Decision date

10 May 2007

Hearing officer

Mr Geoffrey Hobbs QC

Mark

VOGUE

Classes

03

Applicant

Conde Nast Publications Limited

Opponent

United Toiletries & Cosmetics Limited

Opposition

Section 5(4)(a)

Result

Section 5(4)(a): Appeal to the Appointed Person allowed in part.

Points Of Interest

• None

Summary

The application included “soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices” in its Class 3 specification and it was these goods that the opponent objected to because of its claimed use in respect of perfumes. In his decision dated 19 October 2006 (BL O/298/06) the Hearing Officer allowed the opposition and ordered that the goods listed above be removed from the specification of the mark in suit.

On appeal the applicant asked that the decision of the Hearing Officer be set aside on the basis that the opponent had not proved that it had a protectable goodwill in the UK at the relevant date. The Appointed Person considered the evidence before the Hearing Officer and noted that this evidence had not been contradicted by the applicant and no request had been made to cross-examine the declarants. Also the applicant had launched passing-off proceedings in the High Court in 1997 (after the relevant date) but had not proceeded with this attack. In all the circumstances the Appointed Person concluded that it was open to the Hearing Officer to decide that the opponent had a protectable goodwill in relation to perfumes at the relevant date 28 October 1996 even though the evidence before him was somewhat sketchy.

The Appointed Person went on to consider the consequences of that decision. In his view the finding did not entitle the opponent to a broad scope of protection and he decided that the applicant could retain “cosmetics, hair lotions and dentifrices” within its specification. Appeal allowed to this extent.