• IN THE UK OFFICE

    Victorias Cross Swords

    A Spanish company Cita Tabacos de Canarias applied to register the trade mark Victoria for a broad range of Class 34 goods, including cigarillos. The application was opposed by First Quench Retailing primarily on the basis that

    • The application had been made in bad faith since the applicant did not have a bona fide intention to use the mark in relation to all the Class 34 goods claimed (Section 3(6)), and

    • The use of the mark applied for was liable to be prevented in the UK by virtue of the law of passing off in view of the opponent's goodwill and reputation in the trade mark Victoria Wine.


    The opponent's evidence showed that they (and their predecessors) had traded as a retailer of alcoholic and non-alcoholic beverages and tobacco products on a large scale in the UK for over a century. In the year prior to Cita's trade mark application, the opponent's sales amounted to £674 million, with £281 million of these sales being of tobacco products. The opponent also claimed some sales of own brand (i.e. Victoria Wine) cigarettes. However, this claimed activity was dwarfed by their retailing of third parties' tobacco products. The opponent provided no evidence to substantiate their claim of bad faith under Section 3(6).

    The applicant provided evidence of their use of the trade mark Victoria in Spain since 1975 and their plans to launch the brand in the UK. In an affidavit, the applicant's general manager stated that "…the Victoria name will be used in the UK for cigarillos only and not for cigarettes".

    The Hearing Officer first considered the Section 3(6) ground of opposition. He had little doubt that applying for a trade mark without an intention to use the mark on all the goods specified amounted to bad faith. In view of the applicant's comments on their limited plans for the use of the trade mark Victoria in the UK (in relation to cigarillos only), he found that the applicant did not possess the necessary bona fide intention to use the mark applied for in relation to the full range of Class 34 goods claimed. The Section 3(6) opposition therefore succeeded for all the goods specified except cigarillos.

    He then considered the Section 5(4)(a) ground. On the basis of the evidence filed by the opponent, the Hearing Officer was unable to find that First Quench had goodwill or a reputation in the UK in relation to tobacco products per se, although they had shown that they were known as retailers of such goods. In the absence of either evidence showing that it was common practice for the retailers of tobacco products to place their own mark upon such products or independent evidence dealing with the public's perception of such use, the Hearing Officer found that he could not conclude that the opponent's extensive retailing of tobacco products amounted to the use of Victoria Wine in relation to the goods themselves. On this basis, he found that First Quench had not used their trade mark in relation to Class 34 goods. This finding, combined with the fact that the mark applied for (Victoria) and the opponent's mark (Victoria Wine) were similar but not identical, led the Hearing Officer to decide that the use of Victoria on cigarillos would not amount to a misrepresentation in the UK. The opposition under Section 5(4)(a) therefore failed.

      

    Comment

    This is a very interesting and a welcome decision. It will be noted that the opponent succeeded in part on a bad faith (Section 3(6)) objection in relation to which he filed no evidence. The decision to restrict the specification to cigarillos was based exclusively on the applicant's evidence. Are we to conclude from this that Cita's original application was a fraud and that First Quench's bad faith objection was a serious allegation? If so, then the vast majority of UK trade mark applicants are acting fraudulently on a regular basis and, until recently at least, their representatives were trading serious allegations at will.

    Of course, Cita's application was not a fraud, it was merely the standard practice of all trade mark owners to claim as broad a range of goods (services) as possible. Further, First Quench's Section 3(6) objection was not a serious allegation, it was merely an attempt to restrict Cita's application to the goods in which they were really interested. This is (or should be) the cut and thrust of trade mark practice. To suggest that fraud is being committed or that serious allegations are being made is to misunderstand the whole process. The tragedy is that the successful (Section 3(6)) basis of First Quench's opposition would now, in the absence of convincing evidence being provided by the opponent at the start of proceedings, be thrown out by the UK Office. Thus, a perfectly reasonable and sensible way of limiting the monopolies of trade mark owners has been emasculated. Far from discouraging the use of Section 3(6) as a weapon in trade mark oppositions, the Office and the Courts should welcome it with open arms. Further, they should encourage OHIM to recognise a bad faith ground of objection as a legitimate means of restricting the specifications of CTM registrations during the five year period after registration when a non-use attack is not possible. In recent years, trade mark owners have been allowed to claim increasingly broad specifications of goods (services). Not surprisingly, they have therefore done so. If the UK (and CTM) Offices refuse to stop this practice by examining specifications more critically, then, at the very least, they should allow an attack against the breadth of such specifications, based on the ground of bad faith, at an early stage in the life of the trade mark right.