Trade mark decision

BL Number

O/310/07

Decision date

23 October 2007

Hearing officer

Mr G Salthouse

Mark

MAGIC SPELLING and Star Device

Classes

09, 16, 41

Applicants

Voluntary and Community Sector Learning Consortium Limited

Opponents

Magical Spelling Limited

Opposition

Sections 3(6) and 5(4)(a)

Result

Section 3(6): Opposition successful. Section 5(4)(a): Not considered.

Points Of Interest

• Both Ms Kemp and Ms Tracy were cross-examined at the hearing.

Summary

Ms Cricket Kemp an officer of the opponent company claimed to have coined the mark in 1989 and it has been used by herself and colleagues and by such organisations as Learning Excellence NLP North East and more recently the opponent company. The mark is also used on the internet at www.magicalspelling.com <http://www.magicalspelling.com> in connection with the opponent’s education and training methods.

Ms Isabelle Tracy, Managing Director of the applicant, approached Ms Kemp and colleagues about the production of a DVD entitled “Magical Spelling and Learning Strategies” and this was proceeded with. On completion Ms Kemp and others who had participated were required to sign forms with regard to their appearance in the DVD and Ms Tracy appears to have assumed that this gave her and her company some rights in the mark. In any event Ms Tracy’s company, the applicant, went ahead and filed the application in suit without seeking consent, or advising, Ms Kemp or her company about the application.

From the evidence before him ,the Hearing Officer noted that Ms Tracy had acknowledged that the words appearing in the mark in suit belonged to others and only resorted to the excuse of the “release forms” as giving consent when she was cross-examined at the hearing. The Hearing Officer concluded that the application, and claim to ownership, had been made in bad faith and opposition on the Section 3(6) ground succeeded.

In view of the decision under Section 3(6) the Section 5(4)(a) ground was not considered.