Decision Nº O/120/09 from Intellectual Property Office - (Trade market), 7 May 2009
| Judge | Mr M Bryant |
| Date | 07 May 2009 |
| Administrative Decision Number | O/120/09 |
| Registration Number | UK00002451462 |
| Court | Intellectual Property Office (United Kingdom) |
O-120-09
IN THE MATTER OF APPLICATION No 2451462
BY ALTERNATIVE FINANCE GROUP LTD TO REGISTER THE TRADE MARK
IN CLASSES 36 AND 37
AND IN THE MATTER OF OPPOSITION
THERETO UNDER NO 95425
BY NATIONAL WESTMINSTER BANK PLC
2
IN THE MATTER OF Application No. 2451462
by Alternative Finance Group Ltd to register the Trade Mark
in Classes 36 and 37
and
IN THE MATTER OF Opposition thereto under No. 95425
by National Westminster Bank Plc
BACKGROUND
1) On 2 April 2007, Altenative Finance Group Ltd (“AFG”) of 108 Shirecliffe Lane,
Shirecliffe, Sheffield, S3 9AE applied under the Trade Marks Act 1994 (“the Act”)
for registration of the above trade mark.
2) The application was in respect of the following services:
Class 36: Investment and savings, mortgages and home finance,
commercial and corporate finance, insurance and security, banking and
finance, insurance; financial affairs; real estate affairs. This also includes
building society services; banking (including home banking); stockbroking;
financial services provided on the Internet; providing tokens of value in
relation to bonus and loyalty schemes; providing financial information.
Class 37: Advisory services relating to development of property, advisory
services relating to property development, commercial retail property
development services, development (property-), development of property,
property development, services of property development.
3) On 16 August 2007, National Westminster Bank Plc (“NatWest”), of 135
Bishopsgate, London, EC2M 3UR filed notices of opposition to the application. It
bases its opposition on Sections 5(2) (b), 5(3) and 5(4) (a) of the Act and is in
respect of eight earlier trade marks all including one of the following devices:
3
Full details of these earlier trade marks can be found in the annex to this
decision.
4) NatWest claims to have established a significant goodwill in the UK in its
business associated with its “three arrow heads” logo. This logo has been used
since 1 January 1970 in respect of a broad range of goods and services including
financial services and financial services relating to property. For the purposes of
the Section 5(2) (b) and Section 5(3) grounds, NatWest relies upon its eight
earlier trade marks where the dominant element is claimed to be the “three arrow
heads” logo. It also claims that use of the contested trade mark would be
contrary to Section 5(4) (a) of the Act and is liable to be prevented by virtue of
the law of passing off based on NatWest’s common law rights in its “three arrow
heads” logo.
5) AFG subsequently filed a counterstatement denying that its trade marks offend
Sections 5(2) (b), 5(3) and 5(4) (a) of the Act. NatWest are put to strict proof of
use regarding its claim to have used its “three arrow heads” logo since 1 January
1970 and regarding its statement of case in respect to the Section 5(2) (b), 5(3)
and 5(4) (a) grounds. In any event, AFG claim that it has continually used its
trade mark for at least five years on a substantial scale in the UK, such that the
Registrar’s honest concurrent user requirements are met.
6) Only NatWest filed evidence and this is summarised below. Both sides seek
an award of costs. Neither party wished to be heard, but NatWest filed written
submissions in lieu of a hearing.
Opponent’s Evidence
7) This takes the form of a witness statement, dated 17 June 2008, by Neil
English, Senior Marketing Manager for Brand Strategy with NatWest. Mr English
reiterates that the “three arrow heads” logo has been used continually since
January 1970 in relation to a wide variety of financial services including those
relating to property. It has been used throughout the UK with NatWest branches
in all regions of England, Wales and Scotland.
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