Trade mark decision

BL Number

O/126/08

Decision date

1 May 2008

Hearing officer

Mr M Foley

Mark

FAB CAFÉ FAB Café (stylised) & device FAB Cafe (stylised) & device)

Classes

41, 43

Applicant

TV21 Café Bar Limited

Opponent

Jordan Michael Royce

Opposition

Sections 3(6), 5(4)(a) & 5(4)(b)

Result

Section 3(6): Opposition successful. Section 5(4)(a): Opposition successful. Section 5(4)(a): Opposition successful.

Points Of Interest

• The opponent being successful was awarded costs. In this case the opponent requested costs beyond the usual scale of costs used in relation to proceedings before the Registrar. The opponent filed written submissions and details of its costs. In a supplementary decision issued on 8 September 2008 (BL O/251/08) the Hearing Officer awarded the opponent the sum of £18,186.

Summary

Only the opponent and his professional representative filed evidence in these proceedings.

It would appear that the principals of the applicant company are Stephen and Paul Petricio. They, together with Mr Royce (the opponent), developed a ‘themed bar’ concept based on cult television programmes in the mid 1990’s. As Mr Royce had some computer knowledge he designed logo’s for the bar and these designs are identical or very similar to the logo marks in suit.

In March 1996 a company called Halesden Limited was formed, later changing its name to FAB Leisure Limited. This company traded under the name FAB Café and used the FAB Café logo at premises in Manchester and Leeds. The businesses operate as café bars during the day and nightclubs in the evening. FAB Leisure went into creditors voluntary liquidation in January 2004 but the Manchester and Leeds businesses continued to operate under the control of a company called Fame City Limited and with the consent of the liquidator. Parallel Court Proceedings are going on in conjunction with these proceedings and some information about these proceedings, in which the Petricio brothers are suing Mr Royce, indicate that Mr Royce was supposed to arrange for the transfer of intellectual property from Fab Leisure Ltd to Fame City Ltd but instead transferred these assets to Kenetic Red, a company owned by Mr Royce and Ms Leonova Johnstone, and it is this company which continues to operate the bar cafés in Manchester and Leeds.

The Hearing Officer merely noted the existence of the Court proceedings and went on to consider the grounds before him.

Under Section 5(4)(a) the Hearing Officer noted that the current businesses are operated by a company owned by the opponent. That company has acquired a reputation and goodwill in the businesses and this would be damaged if the applicant was to register its marks. The opponent thus succeeded on the Section 5(4)(a) ground.

As regards the copyright issues, Section 5(4)(b), the opponent had filed evidence to show that he had designed logos identical or very similar to the logo marks in suit. In the absence of any evidence from the applicant, the opponent also succeeded in this ground.

Finally as regards bad faith, Section 3(6), the applicant must have been aware that another party was using the marks in suit when it made its application. The application was thus made in bad faith and the opponent also succeeded on this ground.

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URL: http://www.bailii.org/uk/cases/UKIntelP/2008/o12608.html