Decision Nº O/238/19 from Intellectual Property Office - (Trade market), 9 May 2019
| Judge | Professor Ruth Annand |
| Date | 09 May 2019 |
| Registration Number | UK00003003551, UK00003003552, UK00003122696, UK00003139254, UK00003139258, UK00003139259 |
| Administrative Decision Number | O/238/19 |
| Court | Intellectual Property Office (United Kingdom) |
BL O/238/19
1
TRADE MARKS ACT 1994
IN THE MATTER OF
TRADE MARK APPLICATIONS Nos. 3139254, 3139258 & 3139259
IN THE NAME OF WALMART APOLLO LLC
AND OPPOSITIONS Nos. 406281, 406282 & 406283 THERETO
BY TAILOR & CUTTER (CAMBRIDGE) LIMITED
AND IN THE MATTER OF
TRADE MARK APPLICATION No. 3122696
IN THE NAME OF TAILOR & CUTTER (CAMBRIDGE) LIMITED
AND OPPOSITION No. 407960 THERETO
BY WALMART APOLLO LLC
AND IN THE MATTER OF
TRADE MARK REGISTRATIONS Nos. 3003551 & 3003552
IN THE NAME OF WALMART APOLLO LLC
AND INVALIDATIONS Nos. 501557 & 501558 THEREOF
BY ANDREW CAMPBELL JACKSON, TAILOR & CUTTER LIMITED AND
TAILOR & CUTTER (CAMBRIDGE) LIMITED
AND IN THE MATTER OF
AN APPEAL TO THE APPOINTED PERSON
BY THE APPLICANTS FOR INVALIDATION
AGAINST A DECISION OF MR MARK KING DATED 22 MAY 2018
______________
DECISION
______________
Introduction
1. This appeal is in the following consolidated proceedings, listed in order of time of
filing:
(1) Oppositions numbers 406281 – 3 filed by Tailor & Cutter (Cambridge)
Limited (“T&C”) on 18 March 2016 against Applications numbers 3139254,
3139258 and 3139259 all filed on 4 December 2015 standing in the name of
Walmart Apollo, LLC (“Walmart”) to register the word trade mark TAILOR
& CUTTER and 2 x series of TAILOR & CUTTER figurative trade marks in
Class 25. The oppositions were based under Section 5(1) – (2) of the Trade
Marks Act 1994 on T&C’s earlier (then) Application number 3122696 for a
series of 2 x trade marks for the words TAILOR & CUTTER and TAILOR
AND CUTTER in Classes 14 and 25. They were also based on T&C’s
BL O/238/19
2
claimed earlier unregistered rights in TAILOR & CUTTER under Section
5(4)(a) of the Act.
(2) Opposition number 407960 filed by Walmart on 25 November 2016 against
Application number 3122696 filed on 17 August 2015 by T&C for a series of
2 x trade marks for the words TAILOR & CUTTER and TAILOR AND
CUTTER in Classes 14 and 25. The opposition was based inter alia under
Section 5(1) – (2) on Walmart’s earlier trade mark number 3003551 for the
words TAILOR & CUTTER in Class 25.
(3) Invalidity Applications numbers 501557 and 501558 by joint applicants
Andrew Campbell Jackson, Tailor & Cutter Limited and T&C (“joint T&C
applicants”) filed on 8 February 2017 to invalidate Walmart’s Registrations
numbers 3003551 TAILOR & CUTTER (relied on in (2) to oppose T&C’s
Application number 3122696 in turn relied on in (1) to oppose Walmart’s
Applications numbers 3139254, 3139258 and 3139259) and 3003552
TAILOR & CUTTER For the discerning gentleman figurative under Section
47(2) and Section 5(4)(a) of the Act on the basis of the joint T&C applicants’
claimed unregistered rights in the names and marks TAILOR & CUTTER and
TAILOR AND CUTTER.
2. As will be appreciated from the above, and as was acknowledged by the Registrar and
the parties, the pivotal action in these consolidated proceedings was action (3) –
Applications numbers 501557 and 501558 to declare invalid Walmart’s earlier
TAILOR & CUTTER trade marks numbered 3003551 and 3003552 (particularly the
former) for TAILOR & CUTTER and TAILOR & CUTTER For the discerning
gentleman figurative in Class 25 under Sections 47(2) and 5(4)(a) of the Act.
3. It is against Mark King’s decision, acting for the Registrar, dated 22 May 2018, BL
O/312/18, entirely to dismiss the invalidation that the joint T&C applicants now
appeal.
Section 47(2) and Section 5(4)(a)
4. Section 47(2) and Section 5(4)(a) relevantly provided:
“47. –
(2) The registration of a trade mark may be declared invalid on the ground-
[…]
(b) that there is an earlier right in relation to which the condition set out in
section 5(4) is satisfied …
5. –
(4) A trade mark shall not be registered if, or to the extent that, its use in the
United Kingdom is liable to be prevented-
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