Decision Nº O/591/20 from Intellectual Property Office - (Trade market), 25 November 2020
| Judge | Mrs J Pike |
| Administrative Decision Number | O/591/20 |
| Date | 25 November 2020 |
| Court | Intellectual Property Office (United Kingdom) |
| Registration Number | UK00003402074 |
O/591/20
TRADE MARKS ACT 1994
IN THE MATTER OF THE APPLICATION FOR TRADE MARK NO. 3402074
IN THE NAME OF LONDON TRAVEL CENTRE LTD FOR THE TRADE MARK
LONDON HAJJ AND UMRAH
IN CLASSES 39 AND 43
AND
THE OPPOSITION THERETO UNDER NUMBER 418201
BY
ALI JAFARI-FINI
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Background
1. On 25 May 2019, London Travel Centre Ltd (“the applicant”) applied for the trade
mark LONDON HAJJ AND UMRAH for the following services:
Class 39: Travel Agency services for arranging Airline Tickets, Visas, arranging
holidays, arranging ground transportation.
Class 43: Arranging accommodation for pilgrims, for holidays, for business travellers.
2. The application was published for opposition purposes in the Trade Marks Journal,
on 26 July 2019. Ali Jafari-Fini opposes the application under sections 5(2)(b), 5(3)
and 5(4)(a) of the Trade Marks Act 1994 (“the Act”). The section 5(2)(b) ground is
based upon the following earlier registered marks which Mr Jafari-Fini owns:
(i) 2398755 (filing date: 5 August 2005; registered 28 November 2008)
HAJ AND UMRA
HAJ & UMRA
(series of two marks)
Class 39: Travel arrangement services.
Class 43: Provision of temporary accommodation.
(ii) 2391203 (filing date: 6 May 2005; registered 4 November 2005.)
(series of 2 marks)
Class 39: Travel arrangement services.
Class 43: Provision of temporary accommodation.
Page 3 of 52
(iii) 2391202 (filing date: 6 May 2005; registered 4 November 2005.)
Class 39: Travel arrangement services.
Class 43: Provision of temporary accommodation.
3. Mr Jafari-Fini claims that the parties’ services are identical and the marks are highly
similar, the combination of which will lead to a likelihood of confusion. The same three
earlier registrations are relied upon for the section 5(3) ground. Mr Jafari-Fini claims
that the reputation of the earlier marks would mean that use of the applicant’s mark
would cause the public to believe that the marks are used by the same or an
economically linked undertaking; and, further, that the use would cause detriment to
the distinctive character and repute of the earlier marks and give the applicant an unfair
advantage.
4. Mr Jafari-Fini made a statement of use in respect of his earlier marks as they had
been registered for five years or more on the date on which the contested application
was filed (section 6A of the Act refers).
5. Mr Jafari-Fini’s section 5(4)(a) ground is based upon his goodwill resulting from the
use of signs corresponding to the earlier registrations, which he states have been used
in the UK since 1993 in relation to travel agency services; travel advice services; travel
arrangement; provision of temporary accommodation; booking of hotels; booking
flights; arranging visas; arranging hotels; arranging ground transportation; booking
coaches; arranging pilgrimages; arranging holidays. Mr Jafari-Fini claims that use of
the application would be liable to be prevented under the law of passing off, as the
similarity between the signs and the application would cause misrepresentation and
damage to his business.
6. The applicant filed a notice of defence and counterstatement, denying the grounds
and putting Mr Jafari-Fini to proof that he has made genuine use of the earlier marks
in relation to the registered services. In particular, the applicant states that:
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