South Cone Incorporated v. Bessant, Greensmith, Kenwyn House and Stringer trading as "REEF" [2001] EWHC Ch 420 (16th May, 2001)

South Cone Incorporated v. Bessant, Greensmith, Kenwyn House and Stringer trading as "REEF" [2001] EWHC Ch 420 (16th May, 2001)

The hearing officer erred in failing to consider channels of trade and overlap in customer base, leading to an incorrect conclusion under section 5(2)(b); there is a likelihood of confusion between the applicants' and opponent's marks for the relevant goods. The decision under section 5(2)(b) is reversed. The...

Source-derived case information.

Citation
[2001] EWHC Ch 420
Parties
Appellant: South Cone; Applicant: Members of the pop group 'Reef'
Jurisdiction
England and Wales
Procedural Posture
Trade Mark Opposition Appeal / Appeal From Decision of Principal Hearing Officer for Registrar of Trade Marks
Outcome
Appeal allowed in part; hearing officer's decision reversed in respect of section 5(2); appeal dismissed in respect of section 5(4).
Legal Topics
Trade Mark Registration, Likelihood of Confusion, Bad Faith, Passing Off, Appeal Procedure
Intellectual Property Trade Marks Trade Mark Registration Likelihood of Confusion Bad Faith Passing Off Appeal Procedure

Source-derived case record

Summary, issues, holding and outcome

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Parties

South Cone

Appellant

Members of the pop group 'Reef'

Applicant

Procedural Posture

Trade Mark Opposition Appeal / Appeal From Decision of Principal Hearing Officer for Registrar of Trade Marks

Legal Issues

  1. 1 Whether the applicants' trade mark application was made in bad faith under section 3(6) of the Trade Marks Act 1994
  2. 2 Whether there is a likelihood of confusion under section 5(2)(b) between the applicants' mark and the opponent's earlier mark
  3. 3 Whether the use of the applicants' mark would amount to passing off under section 5(4)

Ratio Decidendi

The hearing officer erred in failing to consider channels of trade and overlap in customer base, leading to an incorrect conclusion under section 5(2)(b); there is a likelihood of confusion between the applicants' and opponent's marks for the relevant goods. The decision under section 5(2)(b) is reversed. The decision under section 5(4) (passing off) is upheld as the evidence is insufficient to overturn the hearing officer's findings.

Court Disposition

Appeal allowed in part; hearing officer's decision reversed in respect of section 5(2); appeal dismissed in respect of section 5(4).

Orders

  • Hearing officer's order reversed in so far as it relates to the opposition under section 5(2).
  • Appeal dismissed as to the opposition under section 5(4).