Section 3(6) – Opposition succeeded
Section 5(2)(b) – Opposition succeeded against the applicants Class 33 application.
Proprietorship: There must be a proprietor in existence at the date of application.
The opponents owned registrations for the marks HALLMARK and ISLAY HALLMARK in Class 33 in respect of the same and similar goods to those included within the applicants Class 33 application. They also claimed that they could find no trace of the applicant company Vintage Hallmark. Thus as the applicants did not appear to have any legal status the opponents claimed that the application had been filed in bad faith (Section 3(6)) of the Act.
The applicants responded to the allegation of bad faith by stating that the application had mistakenly been filed in a trading name and that it should have been filed in the name of Vintage Hallmark of St James Plc. They stated that there had been no change of ownership and filed a Form TM 21 requesting the Registrar to alter the application and other appropriate records.
The Hearing Officer noted from the copy documentation provided by the opponents that Vintage Hallmark of St James Plc had been incorporated on 1 September 2000 which was well after the application date of 24 February 2000. In relation to the Section 3(6) ground the Hearing Officer concluded that as the PLC company had not been incorporated until 1 September 2000 there could not have been a trading name for a company which did not exist at the time of filing of the application. If there was no applicant then there could be no intention to use at the date of application as required by Section 32(3). The opposition thus succeeded under Section 3(6) in respect of the whole of the application.
In relation to the Section 5(2)(b) ground the Hearing Officer noted that identical and similar goods were at issue and went on to compare the respective marks HALLMARK and ISLAY HALLMARK with VINTAGE HALLMARK OF ST JAMES’S. In making the comparison the Hearing Officer accepted that the terms ISLAY and ST JAMES’S were merely geographical indicators and that VINTAGE is a very descriptive and non-distinctive word in relation to whisky products and the like. Thus the distinctive and dominant element in each mark was the word HALLMARK and the Hearing Officer concluded that the respective trade marks were so similar that confusion was likely. Opposition thus succeeded on this ground against the applicants Class 33 application.
Mr M Reynolds
 UKIntelP o15602
Trade Marks Act 1994 5(2)(b) 3(6)
Updated: 30 March 2021; Ref: scu.455098