Decision Nº O/083/21 from Intellectual Property Office - (Trade market), 5 February 2021

JudgeMs C Boucher
Date05 February 2021
Registration NumberUK00003298814
CourtIntellectual Property Office (United Kingdom)
Administrative Decision NumberO/083/21
O/083/21
TRADE MARKS ACT 1994
IN THE MATTER OF TRADE MARK APPLICATION NO. 3298814
BY CAVIAR HOLDINGS INC.
TO REGISTER THE FOLLOWING MARKS AS A SERIES IN CLASSES
9, 14, 16, 18, 25, 32, 35, 38, 41 & 43:
MARQUEE
AND
IN THE MATTER OF THE OPPOSITION THERETO
UNDER NO. 413728 BY
THE FAMOUS MARQUEE CLUB LIMITED
Page 2 of 22
BACKGROUND AND PLEADINGS
1. Caviar Holdings Inc (“the applicant”) applied to register the series of trade marks
shown on the front page of this decision in the United Kingdom on 22 March 2018. The
application was accepted and published on 15 June 2018 in respect of goods and
services in Classes 9, 14, 16, 18, 25, 32, 35, 38, 41 and 43. A full specification can be
found in the Annex to this decision.
2. On 14 September 2018, the application was opposed by The Famous Marquee
Club Limited (“the opponent”). The opposition is based on section 5(4)(a) of the Trade
Marks Act 1994 (“the Act”) and concerns the goods and services in Classes 9, 16, 18,
25, 32, 38, 41 and 43. The goods and services in Classes 14 and 35 are, therefore,
unopposed.
3. The opponent claims that use of the contested mark would be contrary to the law
of passing off and that it has used the sign below since 1958 for a venue, The Marquee
Club:
4. The opponent states that this sign was used on the premises, including on the stage
backdrop, at the club’s original location in Oxford Street, London (1958-1964) and its
subsequent premises in Wardour Street, London (1964-1988). It claims that the font
used for the sign was created by the club’s founder, the late Harold Pendleton. The
opponent describes the club as one of Britain’s foremost live music venues, with an
international reputation. Artists who performed there include The Who, The Rolling
Stones and David Bowie.1 The opponent also states that it has used the sign for the
following goods and services:
Merchandise including apparel; Books and other publications; Records/CDs;
Development of a documentary; Development of a radio station and music
1 Witness statement of Nick Pendleton , paragraphs 15 and 18.

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