Trade mark decision

BL Number

O/266/99

Decision date

2 August 1999

Hearing officer

Mr M Reynolds

Mark

CLEAR CAB

Classes

12, 39

Applicants

In Secure Ltd

Opponents

CareCab Ltd

Opposition

Sections 3(1), 3(3)(b), 3(4), 3(6) & 5(4)(a)

Result

Section 3: - Opposition dismissed (all grounds).

Section 5(4)(a): - Opposition failed.

Points Of Interest

• 1. Passing-Off - an interesting application of the law of passing off to a situation where trading under a mark had yet to begin.

Summary

Opposition based on the opponent’s claimed use of the trade mark CARECAB, notably in respect of the manufacture and sale of vehicles adapted for transporting elderly and disabled people. The Hearing Officer proceeded to regard the main ground of opposition as arising under Section 5(4)(a), dismissing briefly the grounds raised under Section 3 for want of supporting evidence or argument, and as misconceived in the case of grounds raised under Sections 3(3)(b) and 3(4).

Having reviewed recent authorities on the law of passing off as applicable to situations (as in the case of the opponent) where preparations for trading under a mark have been undertaken, though no actual sales had taken place, the Hearing Officer was not satisfied that the opponent had in fact established any goodwill under its mark.

He then observed that even if he had been persuaded otherwise, the opponent would still have had difficulty in persuading him that use of the mark in suit would lead to misrepresentation and damage, given the differences between marks and the nature of the respective goods and services involved. Opposition under Section 5(4)(a) accordingly failed

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