• In the UK Office

    Loaded Dice Again

    In April 1994 IPC Media Limited launched a new magazine called Loaded aimed at a male readership aged between 20 and 35 years old. The magazine included mainly features on fashion, celebrities, travel, lifestyle and sport.

    In October 1995 IPC Media applied to register the mark Loaded for a variety of goods and services in Classes 9, 35, 41 and 42, and Loaded Records Limited filed a Notice of Opposition against the application. Although a number of grounds of opposition were stated, the opponents came to rely on Section 5(4)(a) only, namely that the use of the applicant's mark was liable to be prevented in the UK by the law of passing-off. The opposition was directed against "recorded tapes, discs and cassettes; CD ROMS, interactive CD ROMS; computer software, computer programs; information stored in or on electronic, magnetic and/or optical means" in Class 9 only.

    Before the UK Trade Mark Office, the Hearing Officer was satisfied that, at the date of the application, the opponent had shown goodwill or reputation for sound recordings in the UK through their Loaded record label, and that use by the applicant of the mark Loaded for sound recordings would amount to a misrepresentation that the applicant's goods were those of, or in some way connected with, the opponent leading to consequent damage of the opponent's goodwill. On these grounds the application was rejected for "recorded tapes, discs and cassettes; CD ROMs, interactive CD ROMs", but allowed for "computer software and computer programs; information stored in or on electronic, magnetic and/or optical means".

    An appeal was filed by IPC Media on the ground that the Hearing Officer was wrong to find that, on the basis of the evidence before him, there existed at the date of application any goodwill in the UK in the Loaded record label in respect of sound recordings.

    In the appeal both parties agreed that the Appointed Person should follow the ruling set out by Pumfrey J. in Reef Trade Mark, namely, that findings of primary facts will not be disturbed unless the Hearing Officer made an error of principle or was plainly wrong on the evidence, and that error will be corrected, but a different appreciation will not be substituted for that of the Hearing Officer if he had arrived at his conclusion without error.

    The Appointed Person followed the ruling in Reef Trade Mark which requires that in a passing-off claim before the Office:

    • The Registrar must be presented with evidence which at least raises a prima facie case that the opponent's reputation extends to the goods comprised in the applicant's specification.

    • The evidence will include evidence from the trade as to reputation, and evidence as to the manner in which the goods are treated or the services supplied. The evidence of reputation must come primarily from the trade and ththe public and needs to be supported by evidence of the extent of use. The evidence needs to refer to the relevant date.

    • Once this evidence has been raised, the applicant must rebut the prima facie case by producing sufficient evidence that, on the balance of probabilities, passing-off will not occur.



    The Appointed Person decided that, in the present case, despite the fact that valid criticisms could be made of individual items in the opponent's evidence, this evidence, when viewed collectively, established goodwill in the Loaded record label in the UK at the date of the application, and the application was therefore rejected in respect of "recorded tapes, discs and cassettes; CD ROMs, interactive CD ROMs".

     

     

    Comment

     

    This case needs to be compared with a previous case involving the mark Loaded , where IPC Media opposed an application for the mark Loaded in respect of clothing, under the provisions of Section 5(3) of the 1994 Act (see Make Your Mark, Spring 2001). Although, in this previous case, IPC Media were successful in their opposition, it must be noted that a different level of evidence of use is required in order to be successful in an opposition under Section 5(3) (the dilution section) compared with Section 5(4)(a).

    When considering Section 5(3) the questions that need to be decided relate to the issues of a) reputation and b) unfair advantage and/or detriment. The onus of proving both reputation and unfair advantage/detriment lies upon the opponent. However, in the latest Loaded case, under Section 5(4)(a) (passing-off), it was decided that, once the opponent has raised a prima facie case that at the time of the application their reputation extended to the goods comprised in the applicant's specification of goods, it is for the applicant to rebut the prima facie case and prove by evidence that, on the balance of probabilities, passing-off will not occur.

    Of course, in a claim under Section 5(3) there is also the hurdle of proving unfair advantage or detriment, that being by reason of dilution, blurring, tarnishing or inhibition of future merchandising activities. This might be slightly easier to prove in the case of typical merchandise goods such as clothing, but, in any other cases, unfair advantage/detriment can be just too difficult to prove, and in these cases the opposition is bound to fail.