Geoffrey Hobbs QC said: ‘On the evidence before me I am prepared to accept that at the date of the application for registration of the later CORGI trade mark: (i) the applicant was the proprietor of a substantial and valuable goodwill built-up and acquired in connection with the promotion and sale of CORGI model vehicles over many years; (ii) the applicant could be damaged in its use and enjoyment of that goodwill if people were deceived or confused by use of the later CORGI trade marks as a trade mark for outer wear, sport and leisure wear. There is a question as to whether the word CORGI has been used by the applicant in a manner and to an extent sufficient to cause it to be misleading when used as a trade mark for the goods of interest to the respondent. This is the point at which I begin to have difficulty with the applicant’s objection under section 5(4). I do not regard it as self-evident that people would be misled (with a concomitant risk of damage to the applicant in its use and enjoyment of the goodwill built up and acquired in connection with the promotion and sale of CORGI model vehicles) if the word CORGI was used by the respondent as a trade mark for outer wear, sport and leisure wear. The applicant’s evidence leaves me in doubt on these matters. I think it is quite possible that people would perceive or assume correctly that the same mark was being used by separate undertakings trading independently of one another.’
Judges:
Geoffrey Hobbs QC
Citations:
[1999] RPC 15
Jurisdiction:
England and Wales
Cited by:
Cited – Jules Rimet Cup Ltd v The Football Association Ltd. ChD 18-Oct-2007
The parties disputed on preliminary issues the ownership of the rights in the trade mark ‘World Cup Willie’. The claimant had set out to register the mark, and the defendant gave notice of its intention to oppose. The claimant now alleged threat and . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 27 November 2022; Ref: scu.260081
