Decision Nº O/940/21 from Intellectual Property Office - (Trade market), 30 December 2021
| Judge | Mr O Morris |
| Registration Number | UK00003356558 |
| Date | 30 December 2021 |
| Court | Intellectual Property Office (United Kingdom) |
| Administrative Decision Number | O/940/21 |
BL O/940/21
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION NO. 3356558
BY WORLD GOLF GROUP LIMITED
TO REGISTER THE FOLLOWING TRADE MARK IN CLASSES 25, 28, 38 & 41:
AND
OPPOSITION THERETO
UNDER NO. 415799
BY PGA TOUR INC.
2
Background and pleadings
1. On 27 November 2018, World Golf Group Limited (‘the applicant’) applied to
register the trade mark shown on the cover page of this decision. The application was
accepted and then subsequently published for opposition purposes in the Trade Marks
Journal on 14 December 2018. Registration is sought for the following goods and
services:
Class 25
Clothing; footwear; headgear.
Class 28
Sporting articles and equipment; Games; Playthings; Bags
adapted for sporting articles.
Class 38
Broadcast services; Telecommunications.
Class 41
Education, entertainment and sport services; Publishing and
reporting; Information services for education, entertainment and
sports; Information services for publishing and reporting.
2. On 14 March 2019, the application was opposed by PGA Tour Inc. (‘the opponent’)
under sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994 (“the Act”). The
opponent relies on two earlier marks under sections 5(2)(b) and 5(3), namely:
• UK registration 2534546 for the mark WORLD GOLF CHAMPIONSHIPS which
was filed on 16 December 2009 and which completed its registration procedure
on 15 April 2011. The mark is registered for the following services:
Entertainment services, namely, organizing and conducting a series of
professional golf competitions to be held at various locations throughout the
world, in International Class 41
Class 25: Men's, women's and children's clothing.
3
Class 28: Sporting goods.
Class 41: Entertainment services, organizing a series of professional golf
competitions to be held at various locations throughout the world.
3. Under section 5(4)(a) of the Act, the opponent relies on the use of the sign WORLD
GOLF CHAMPIONSHIPS since 1999; the opponent states that the sign has been
used in the UK since then in relation to:
“Entertainment services, namely, organizing and conducting golf competitions;
entertainment services namely, providing televised and other media broadcast
golf competitions; entertainment services, namely, golf competitions.”
4. The opponent also relies on the following mark under section 5(2)(b) only:
• EUTM 7223316 for the mark WORLD GOLF TOUR which was filed on 10
September 2008 (with a priority date of 22 August 2008 stemming from a US
application) and which completed its registration procedure on 29 September
2010. The mark is registered for:
Class 41: Entertainment services, namely, providing an online interactive
game.
This ground is directed against the following of the applicant’s services only:
Entertainment and sport services; Information services for education,
entertainment and sports in class 41.
5. The applicant filed a defence and counterstatement, denying the grounds of
opposition. It put the opponent to proof of genuine use of the three earlier marks relied
upon. This stems from the fact that each of the earlier marks had been registered for
more than five years as of the filing date of the applied for mark, with the consequence
that the proof of use provisions contained in section 6A of the Act are applicable.
To continue reading
Request your trial