Trade mark decision

BL Number

O/139/98

Decision date

3 July 1998

Hearing officer

Mr M Reynolds

Mark

DIAMOND

Classes

28

Applicants

Open Championship Limited

Opponents

Gunn & Moore Limited

Opposition

Sections 3(1)(a); 3(1)(b); 3(6); 5(1) & 5(2)

Result

Section 3(1)(b) - opposition failed

Section 3(6) - opposition failed

Section 5(1) - opposition successful

Points Of Interest

• Honest concurrent use : bad faith "Where closely competing commercial interests are involved (it does not) amount to a lack of bona fides that a party should seek to protect their position at least until the rival claims can be fully tested ........"

Summary

The opposition was based on the opponents' registrations WILLIAM GUNN DIAMOND and DIAMOND in Class 28. The Hearing Officer dismissed the Section 3(1)(a) ground since it was based on relative rather than absolute objections. The Hearing Officer went on to consider the objections under Section 5; he noted that the applicants had claimed the benefit of Section 7, relating to honest concurrent use. However, since, in his view, identical marks and identical goods were involved (Section 5(1)) refusal was mandatory.

He went on, however, to deal with the objection under Section 3(1)(b), which was founded in the fact that DIAMOND is a common surname. The Hearing Officer decided that in the light of the recent, more relaxed, Registry Practice on the surname Diamond (Chapter 6 of the Work Manual) the objection must fail in the absence of any evidence to the contrary (which had not been provided).

Under Section 3(6) the Hearing Officer decided that in the light of the applicants' claim to honest concurrent use, they could not be said to have acted in bad faith, even taking account of certain correspondence which had taken place between the parties.

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