South Cone Incorporated v Bessant, Greensmith, House and Stringer (a Partnership) trading as ‘Reef’; REEF Trade Mark: ChD 24 Jul 2001

The applicants sought registration of the trade mark ‘Reef’ in connection with merchandising activities in classes 25 and 26 arising from their pop group of the same name. The challengers owned a trade mark ‘Reef Brazil’ in class 25 in relation to footwear, and claimed that there was a risk of confusion, and that if unregistered the use of the mark would have been a passing off. The test was whether the marks were so close, allowing for the goods to which they would be applied, that there was a risk of confusion. The comparison required under the section included looking at the channels of trade. In this cases there was a substantial overlap in the potential customers, and the items would be likely to be sold in the same shops, with confusion persisting perhaps even after a close examination of the goods.
Pumfrey J discussed how a court could look for passing off: ‘There is one major problem in assessing a passing off claim on paper, as will normally happen in the Registry. This is the cogency of the evidence of reputation and its extent. It seems to me that in any case in which this ground of opposition is raised the registrar is entitled to be presented with evidence which at least raises a prima facie case that the opponent’s reputation extends to the goods comprised in the applicant’s specification of goods. The requirements of the objection itself are considerably more stringent that the enquiry under s. 11 of the 1938 Act (see Smith Hayden and Co. Ltd’s Application (OVAX) (1946) 63 RPC 97 as qualified by BALI Trade Mark [1969] RPC 472). Thus the evidence will include evidence from the trade as to reputation; evidence as to the manner in which the goods are traded or the services supplied; and so on.
Evidence of reputation comes primarily from the trade and the public, and will be supported by evidence of the extent of use. To be useful, the evidence must be directed to the relevant date. Once raised, the applicant must rebut the prima facie case. Obviously, he does not need to show that passing off will not occur, but he must produce sufficient cogent evidence to satisfy the hearing officer that it is not shown on the balance of probabilities that passing off will occur.’
Pumfrey J
Gazette 04-Oct-2001, Times 09-Oct-2001, [2001] EWHC Ch 420, [2002] RPC 19
Trade Marks Act 1994 5(1)(b)
England and Wales
Cited by:
Appeal fromBessant and others v South Cone Incorporated; in re REEF Trade Mark CA 28-May-2002
The Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was . .
CitedDyson Limited v The Registrar of Trade Marks ChD 15-May-2003
Applications for trade marks on behalf of the claimant had been rejected. Acquired distinctiveness was a significant issue, and the question of whether the appeal was a review or a rehearing was significant. In this appeal, the parties had given . .
CitedMinimax Gmbh and Co Kg v Chubb Fire Ltd PatC 29-Jul-2008
Chubb sought to prevent the registration of a mark by the claimant arguing that its use would amount to passing off as against its own marks.
Held: There was insufficient evidence for the hearing officer to have found that Chubb had maintained . .

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Updated: 06 January 2021; Ref: scu.163017