Trade mark decision

BL Number

O/098/01

Decision date

28 February 2001

Hearing officer

Mr S P Rowan

Mark

SNAP 'n' MAP

Classes

09, 16

Applicant

Snap-Map Ltd

Opponent

Concord Camera (Europe) Ltd

Opposition

Sections 3(3)(b) & 3(6); Sections 5(2) & 5(4)(a), & Section 32

Result

Sections 3(3)(b) & 3(6) - Opposition not pursued

Section 5(2) - Opposition not pursued

Section 32 - Opposition not pursued

Section 5(4)(a) - Opposition failed

Points Of Interest

• 1. Costs - Hearing Officer refused applicant an award of actual costs, notwithstanding need for detailed factual inquiry arising from absence of written agreement covering the parties’ collaboration, though he did award higher (scale) costs to cover preparation for and attendance at hearing. Disputed agreement - The parties disagreed on the nature of their verbal agreement, but the Hearing Officer opined that nothing turned on that point, and following the Court of Appeal in Scandecor, neither did he consider the existence or not of a licence to be material.

Summary

Prior to the date of filing of the application in suit, the applicant (having established a business involving manufacture and sale of guide maps for tourists in a pop-up format under the registered trade mark SNAP-MAP) entered into a (subsequently disputed) verbal agreement with the opponent to market those maps in combination with cameras supplied by the opponent. However that collaboration foundered, as did a joint application to register the mark SNAP'n MAP intended to cover the combined products. The applicant then applied to register SNAP'n MAP in its own name and the opposition reflected the opponent’s claim to a goodwill and reputation under that mark arising from the earlier collaboration.

In dealing with the opposition under Section 5(4)(a) (the only ground argued at the hearing), the Hearing Officer found that at the relevant date the evidence did not support a finding that the necessary goodwill and reputation subsisted in the mark in suit, and opposition on that ground therefore failed. He then proceeded to find that, if he was wrong on that point, any goodwill in the mark arising from the collaboration would have been jointly owned by the parties but, since the use of the mark was de minimus, still insufficient to support a passing off action.

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