Trade mark decision

BL Number

O/287/07

Decision date

28 September 2007

Hearing officer

Mr M Reynolds

Mark

MARCH GRAND PRIX

Classes

09, 16, 25, 35

Applicant

March Holdings Ltd

Opponent

Formula One Licensing BV

Opposition

Sections 3(6), 5(2)(b), 5(3), 5(4) & 56

Result

Section 3(6): Opposition failed. Section 5(2)(b): Opposition failed other than in respect of some goods in Class 16. Section 5(3), 5(4) & 56: Opposition failed.

Points Of Interest

• 1. See also BL O/286/07
• 2. A further short decision will be issued if and when the opponent’s Community Trade Mark application has been registered.
• 3. The opponent's Community Trade mark has now been registered and the Hearing Officer issued a further short decision dated 23 January 2008
• (BL O/017/08). This confirms the provisional decision reached above.

Summary

The opponent has a pending application for the mark GRAND PRIX filed on 24 August 2000 with the Community Trade Mark Office. It was filed in classes 9, 12, 16, 25, 28, 35, 36, 38, 41 and 42 but has since been divided with Classes 9, 16, 25, 35, 36 and 42 proceeding under a new number. This new application covers identical and similar goods as those of the applicant. This mark is likely to be advertised shortly for opposition purpose and on the basis of its filing date is an earlier mark for Section 5(2)(b) purposes.

As regards the ground under Section 3(6) the opponent filed evidence which had little relation to the way the ground was pleaded in its opposition. Consequentially, the Hearing Officer decided that the applicant had no case to answer and that opposition failed on this ground.

Under Section 5(2)(b) the Hearing Officer compared that respective marks GRAND PRIX and MARCH GRAND PRIX. As regards the element GRAND PRIX which is common to both marks the Hearing Officer noted that there was nothing in the opponent’s evidence to indicate that this element had ever been used on its own in relation to any goods or services; it had not been licensed by the opponent and there was no indication that others regarded the words GRAND PRIX as a mark. The Hearing Officer noted that the words are very descriptive in relation to the vast majority of the goods and services claimed by the parties. Thus even if registered as a Community Trade Mark the words would not lose their descriptive connotations. This view of the descriptive nature of the words GRAND PRIX led the Hearing Officer to the conclusion that any rights owned by the opponent must be very narrow and could not stop other parties using such words in their marks. In the present case the Hearing Officer concluded that opposition failed in respect of all goods and services of the application other than “paper, cardboard and goods made from these materials in Class 16”. The mark GRAND PRIX has no description connotations in relation to such goods.

As the opponent filed no evidence of use and reputation of its mark GRAND PRIX the Hearing Officer concluded that its grounds of opposition under Section 5(3), 5(4) and 56 must fail.