The Patents Court has allowed an appeal by Lonsdale Sports Limited ("Lonsdale") against the decision of a hearing officer (acting on behalf of the Registrar of Trade Marks) to reject Lonsdale's opposition to the registration by Ahmet Erol of a mark similar to Lonsdale's (Lonsdale Sports Ltd v Erol [2013] EWHC 2956 (Pat)).

Both Lonsdale and Erol were engaged in the sale of sports clothing. Lonsdale had registered a number of trade marks and had built up a reputation for the word LONSDALE presented in cinemascope style with an elongated L. Erol's proposed mark was for the word LONDON, also presented in a cinemascope style with an elongated L.

Lonsdale had opposed registration on the ground that, inter alia, Erol's use of the mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of Lonsdale's marks under section 5(3) of the Trade Marks Act 1994.

In allowing Lonsdale's appeal, the court held that the hearing officer should have found that the requisite link existed between Lonsdale's and Erol's respective marks on the basis that:

  • the goods were identical;
  • the relevant sections of the public to whom the goods would be sold were nearly identical;
  • the use of Lonsdale's marks in relation to the sale of a wide variety of clothing, footwear and headgear over many decades had had a positive (albeit unquantifiable) effect on the distinctive character of Lonsdale's marks;
  • the elongated L and the cinemascope style were present in Erol's mark; and
  • Lonsdale had a long-established business and had sold its goods very successfully over a number of years.

The hearing officer then failed correctly to analyse whether Erol's use of the mark had been without "due cause", and whether unfair advantage or detriment would be caused to the distinctive character or repute of Lonsdale's marks. In particular, the court accepted Lonsdale's submissions that:

  • the hearing officer had failed to appreciate that Lonsdale could not demonstrate actual detriment as Erol's mark had not yet been used, so all that could be done was to draw inferences;
  • Erol not having filed evidence in answer to Lonsdale's evidence and inferences, the only question was whether such inferences could be properly drawn;
  • Erol had not advanced a positive case of "due cause";
  • the hearing officer had failed to consider the plain inferences that ought to have been drawn from the unexplained adoption of the elongated L and the cinemascope style which were distinctive of Lonsdale's marks, and from the fact that it was self-evident that Erol saw an "advantage" in seeking to register his mark that derived from an association with the reputation of Lonsdale's marks; and
  • the hearing officer had failed to give adequate reasons for rejecting Lonsdale's case on the distinctiveness of its marks, whilst finding that Erol's use of Lonsdale's marks would inevitably erode their distinctiveness and diminish the ability of the marks to distinguish Lonsdale's goods from those of other traders.

The court concluded that Lonsdale's objection was sound and that Erol's mark ought not to have been registered.

A full transcript of the judgment is available here

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