Trade mark decision

BL Number

O/281/07

Decision date

24 September 2007

Hearing officer

Mr G Salthouse

Mark

MUSIC CHOICE & device of a bull’s eye Series of 2 MUSIC CHOICE Device of a bulls eye and device of a paint splash

Classes

09, 38, 41

Applicant for Invalidation

Target Brands Inc

Registered Proprietor

Music Choice Ltd

Invalidation

Section 47(2)(a) & (b) based on Sections 3(6), 5(2)(b), 5(3), 5(4)(a) & Article 6 bis

Result

Sections 47(2)(a) & 3(6): Invalidity action failed. Sections 47(2)(b) & 5(3): Invalidity action failed.

Points Of Interest

• 1. See related opposition case BL O/280/07.
• 2. Award of costs above the Registrar’s scale.

Summary

The evidence as summarised under BL O/280/07 also relates to this case.

Prior to the Hearing the grounds under Sections 5(2)(b), 5(4)(a) and Article 6 bis were withdrawn. The ground under Section 3(6) was reduced to “intention to use”.

The applicant for invalidation cast doubt on the registered proprietor’s intention to trade in the range of goods listed in Class 9 or offer services as listed in Class 41. However, in its evidence the registered proprietor had filed a research document dated 6 September 2000 which formed part of a prospectus for potential investors and the Hearing Officer accepted that the specifications in Classes 9 and 41 which were drawn up in the light of this document were reasonable. Invalidation failed on this ground.

With regard to the ground under Section 5(3) the Hearing Officer had little difficulty in finding that this ground failed because the applicant had failed to establish a reputation or goodwill in the UK. However, he also went on to compare the respective marks MUSIC CHOICE and device with TARGET and device and concluded that they were not similar. Invalidation failed on this ground.

Of real interest in this case is the Hearing Officer’s consideration as regards the award of costs to Music Choice. He noted that extensive evidence had been filed by both parties and cross-examination of declarants had taken place. Target had withdrawn a number of grounds in these proceedings and under BL O/280/07 at a late stage in the proceedings and had pursued other grounds which were poorly supported by its own evidence and/or in the face of cogent and relevant evidence from Music Choice. In the light of these considerations the Hearing Officer concluded that a number of the grounds pursued by Target were vexatious and unreasonable. Music Choice made at claim for £168,358.36 but taking an overall view of the proceedings the Hearing Officer awarded it the sum of £112,000 which is well beyond the Registrar’s normal scale.