Trade mark decision

BL Number

O/287/01

Decision date

3 July 2001

Hearing officer

Mr M Foley

Mark

LITTLE HIPPO

Classes

16

Applicant

Scholastic Inc

Opponent

Emilie Boon

Opposition

Sections 5(4)(a) & 5(4)(b)

Result

Section 5(4)(a) - Opposition failed

Section 5(4)(b) - Opposition failed

Points Of Interest

• 1. A useful example of an opposition based on the rarely used Section 5(4)(b) copyright grounds.

Summary

The opponent was an illustrator of children’s books; one of her characters was a ‘LITTLE HIPPO’ figure, bearing a resemblance to the mark applied for. The Hearing Officer found that the opponent did not have a goodwill or reputation in the words LITTLE HIPPO or in the image of a hippopotamus. There was no evidence that her hippopotamus illustrations are regarded as a trade mark of her work, or a sign by which her work is recognised. The action under passing off (Section 5(4)(a) therefore failed. Under Section 5(4)(b) (copyright) the Hearing Officer concluded that the opponent qualified for protection under Section 155 of the Copyright, Designs and Patents Act 1988 as amended by the Copyright (Application to Other Countries) Order 1999 (SI 1999 No 1751). He found, however, that there was no copyright in the words LITTLE HIPPO. The illustration of the hippo figure , however, was an original work and entitled to copyright protection, and the Hearing Officer went on to consider if the applicants’ use of the trade mark would be an infringement of that copyright. After an examination of the differences and similarities concerned, the Hearing Officer came to the view that the mark applied for could not be said to have been copied from the opponent’s work, and consequently the Section 5(4)(b) objection failed.

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