Trade mark decision

BL Number

O/288/07

Decision date

28 September 2007

Hearing officer

Mr D Landau

Mark

MASTERCLASS SABATIER & device of a mortar board Series of 4

Classes

07, 08, 21, 25

Applicant

Thomas Plant (Birmingham) Limited

Opponent

Rousselon Freres Et Cie

Opposition

Sections 5(2)(b) & Section 5(3)

Result

Section 5(2)(b): Opposition failed. Section 5(3): Opposition failed.

Points Of Interest

• As described

Summary

This is a complicated and unusual case which requires careful reading. The first part of the decision relates to the history of the mark and whether the opponent had shown genuine use of the mark(s) as registered.

The opponent (Rousselon) relies upon a registration in Class 8 of the mark SABATIER. Rousselon filed evidence relating to the history of the mark SABATIER and this shows that in the nineteenth century the Sabatier family of Thiers in France began to manufacture knives. Over the years various members of the family registered trade marks in France incorporating the word SABATIER, it being said that prior to 1964 family names were not protectable as trade marks. In 1979 the various proprietors of French trade marks incorporating the word SABATIER formed an association to protect the name SABATIER. There were ten proprietors in 1979 and Rousselon is the successor in title to the mark K SABATIER.

As regards the evidence of use of the mark SABATIER filed by Rousselon, this showed use of marks consisting of two lions and device of two lions with the words SABATIER INTERNATIONAL, and a device of a lion, the word LION and the word SABATIER as well as of the word SABATIER within an oval on the handles of cutlery. The Hearing Officer accepted that this latter use represented relevant use of the mark SABATIER as registered. However, of more importance the Hearing Officer took note of evidence which indicated that not all SABATIER products sold in the UK came from Rousselon. In particular there was some evidence to indicate that some SABATIER products were supplied to UK traders by the Sabatier Guild and if this was the case then the mark SABATIER did not act as an indicator of origin and would require other additional features to do so. That said, it seemed likely that the purchasing public would see SABATIER as an indicator or origin but they would be wrong and indeed would be deceived. In these circumstances there was in fact no genuine use of the mark SABATIER in the five year period prior to the applicant’s application in respect of the goods of the registration. That being the case the opposition must fail.

The Hearing Officer went on to consider the ground of opposition under Sections 5(2)(b) and 5(3) on the grounds that his decision regarding genuine use might be wrong.

As regards the Section 5(3) ground the Hearing Officer noted that evidence was lacking as to turnover and market share and he was unable to conclude that Rousselon had established a significant reputation at the relevant date to buttress its objection under this Section. He decided that in fact the opposition on this ground failed.

As regards the ground under Section 5(2)(b) the Hearing Officer compared the respective goods in great detail and decided where similarity or lack of similarity existed in respect of particular goods. For example he decided that there was no similarity as regards the applicant’s Class 25 goods. In comparing the respective marks the Hearing Officer noted that SATATIER was contained within the applicant’s mark and was likely to be recognised by the public as an indication of origin. Thus in relation to identical and similar goods the public would be confused in relation to origin and/or assume an economically linked undertaking. Thus all things being equal the opponent would succeed on this ground but such a finding would be on the basis that there had been genuine use of the mark SABATIER. In the circumstances of this case opposition failed on this ground.