Trade mark decision

BL Number

O/387/00

Decision date

13 October 2000

Hearing officer

Mr M Foley

Mark

AARP

Classes

16, 41

Applicants

American Association of Retired Persons (on assignment from Bernice T Weston)

Opponents

ARP Management Services Limited

Opposition

Section 3(6) and Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b) - Opposition failed

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Section 3(6) - Opposition successful

Points Of Interest

• 1. An applicant must have a bona fide intention that the mark is to be used by it or with its consent at the date of application. Later assignment after the material date cannot remedy this defect.

Summary

The opponents opposition was based on their ownership and use of the mark ARP OVER 50 as registered in Class 42. The ARP association represents interests of people in the UK who are over 50 years old and it has some 200,000 members. It publishes a quarterly magazine which is mailed to its members and various other organisations. It also undertakes political lobbying and provides various services such as legal advice and discount schemes.

Under Section 5(2)(b) the Hearing Officer concluded that the applicants goods and services were clearly different from the services provided by the opponent and that the marks ARP OVER 50 and AARP were as best only borderline in terms of similarity. Opposition failed.

Under Section 5(3) the Hearing Officer decided that the respective goods and services of the two parties are quite distinct and he did not consider that the opponents had shown in their evidence that they had a significant reputation. Opposition failed.

With regard to "Passing Off" under Section 5(4)(a) the Hearing Officer concluded that the opponents had not shown that they, had a significant reputation or that damage would result if the applicants mark proceeded to registration. Opposition failed.

Under Section 3(6) it was noted that this application had been filed by BerniceT Weston and later assigned to the present proprietors. It was clear from the papers that Ms Watson had never been the proprietor of the mark and never intended to use it herself. The application was made for no other purpose other than to pre-empt an application by the opponents and this was an act of bad faith. Opposition succeeded.

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