Decision Nº O/074/10 from Intellectual Property Office - (Trade market), 23 February 2010
| Judge | Mr Geoffrey Hobbs QC |
| Administrative Decision Number | O/074/10 |
| Registration Number | UK00002459772 |
| Date | 23 February 2010 |
| Court | Intellectual Property Office (United Kingdom) |
O-074-10
TRADE MARKS ACT 1994
IN THE MATTER OF:
OPPOSITION No. 95502
IN THE NAMES OF JOHN WILLIAMS AND BARBARA WILLIAMS
TO TRADE MARK APPLICATION No. 2459772
IN THE NAME OF CANARIES SEASCHOOL SLU
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DECISION
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Trade Mark Application 2459772
1. Canaries Seaschool SLU (‘the Applicant’) was incorporated in Spain on 8 May
2007. It is the proprietor of trade mark application number 2459772 filed on 27 June
2007 for registration of a series of two signs as trade marks for use in relation to the
following services:
Class 39: yacht charter: skippered and bareboat
Class 41: yacht sailing school and training centre; powerboat school and
training centre; associated sailing related shorebased courses.
The signs in the series were graphically represented as follows:
X:\GH\WILLIAMS.1.docx
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Opposition 95502
2. The application for registration was opposed by Mr. and Mrs. John and Barbara
Williams (‘the Opponents’) on 17 September 2007. In their Notice and Grounds of
Opposition they contended that the application should be refused in its entirety: (1) under
Section 3(6) of the Trade Marks Act 1994, on the ground that the application had been
filed in bad faith; (2) under Section 5(4)(a) of the Act, on the ground that the Opponents
were entitled to an earlier right by virtue of the law of passing off to prevent the
Applicant from offering and supplying services of the kind specified under and by
reference to the signs in issue; and (3) under Section 5(4)(b) of the Act, on the ground that
the Applicant was liable to be prevented from using the signs in question by virtue of the
law of copyright.
3. The pleadings filed by the Opponents were diffuse. In summary, they claimed to
have acquired an earlier right through use of the trading name CLUB SAIL SEA
SCHOOL together with the following logo introduced in 1998:
X:\GH\WILLIAMS.1.docx
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which was a variant of a logo introduced in 1987. The later variant differed from the
earlier logo in only two respects: (1) in the variant, the device of a propeller was
superimposed on the earlier logo; (2) in the earlier logo, the words SEA SCHOOL
appeared in block lettering beneath the cursive representation of the words CLUB SAIL.
Both logos were alleged to be original artistic works designed by Mr. John Williams. The
propeller was added to the earlier logo for the purpose of signifying that the Opponent’s
business activities included not only yacht, but also powerboat, charter services and
training courses.
4. The Opponents’ son, Andrew Williams, was alleged to have entered into
collaborative arrangements with them which enabled him to participate in the operation of
their CLUB SAIL SEA SCHOOL business from 1998 to 2006/2007. It was alleged that
in 2006/2007 Andrew Williams began operating autonomously of the Opponents, using
their trading name, logo and domain names without their consent. The Applicant
company was alleged to be a vehicle through which he was competing unfairly with the
Opponents. The opposed application for registration was alleged to have been made for
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