Decision Nº O/611/21 from Intellectual Property Office - (Trade market), 18 August 2021
| Judge | Mr Arran Cooper |
| Date | 18 August 2021 |
| Administrative Decision Number | O/611/21 |
| Court | Intellectual Property Office (United Kingdom) |
| Registration Number | UK00003432763 |
O/611/21
IN THE MATTER OF APPLICATION NO. UK00003432763
BY ROGER YOUNG AND MARCOS ENGINEERING LTD
TO REGISTER:
AS A TRADE MARK IN CLASS 25
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 419242
BY MARCOS SPORTSCARS LTTD
2
BACKGROUND
On 30 September 2019, Mr Roger Young and Marcos Engineering Ltd (“the
applicants”) applied to register the trade mark displayed on the cover page of this
decision for the following goods:
Class 25: Tee-shirts; Sweat shirts; Hats; Head wear; Shirts; Cap peaks;
Clothes; Clothing; Clothing for sports; Baseball caps; Baseball
caps and hats; Baseball hats; Jackets; Leisurewear.
The applicants’ mark was published for opposition purposes on 25 October 2019
and on 27 January 2020 it was opposed by Marcos Sportscars Ltd (“the
opponent”). The opposition initially relied on sections 5(4)(b) and 3(6) of the Trade
Marks Act 1994 (“the Act”). However, on 11 December 2020, the opponent filed
Form TM7G requesting the inclusion of an additional ground under section 5(4)(a)
of the Act into these proceedings. This request was accepted by the Tribunal and
confirmed to the parties in writing on 3 January 2021.
In respect of its opposition under section 5(4)(a), the opponent alleges that it has
been using the following mark throughout the UK since 1964 in respect of “motor
vehicles and parts and fittings therefor”:
The opponent claims that through its licenses, predecessors in title and as a result
of its purchase of the historical goodwill of the above mark in 1999, it enjoys an
extensive goodwill and reputation in its mark. As a result, the opponent claims that
use of the applicants’ mark constitutes a misrepresentation and would cause
confusion with the opponent’s mark and damage to the opponent’s goodwill.
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