Reference: Application No. 2315470; Opposition No. 92512
Court: Trade Marks Registry
Judge: George Salthouse for the Registrar
Date of judgment: 15 Jun 2006
Summary: Trade Marks - Opposition - School Badges - Trade Marks Act 1994 s.3(1)(b) (devoid of distinctive character) - s.3(1)(c) (descriptive marks) - s.3(6) (bad faith)- Costs
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Appearances: Christina Michalos KC (Applicant)
Instructing Solicitors: B.M. Nyman & Co. for the Applicant
The Applicants were suppliers of school uniform to a number of schools & had registered other school badges as TMs with the permission of the respective school. The Apps applied to register the badge of Brampton Manor School as a trade mark in Class 25 for school uniform. The Opponent contended that: (1) registration was contrary to s.3(1)(b) & (c) as the badge was incapable of distinguishing between the goods of different suppliers of school uniform & the mark denoted a characteristic of the goods – that they are intended to be worn by pupils of that School; (2) there was bad faith as the Apps were seeking monopoly rights in a mark to which they were not entitled. They had no intention of using the mark to distinguish their goods from other traders but rather as decoration on clothing to be worn by pupils of Brampton Manor. The Apps evidence was schools wanted uniform to be supplied via official suppliers to guarantee quality and they had the permission of Brampton Manor School.
(1) Whether the Application should be refused as contrary to s.3(1)(b) (devoid of distinctive character) and s.3(1)(c) (signs which designate kind, quality etc or other characteristics of the goods). (2) Whether the Application was made in bad faith. Objection had also been taken under s.5(4)(a) (prohibited by rule of law, in particular passing off) and s.5(4)(b) (earlier right – copyright) but these objections were abandoned at the hearing.
Allowing the application:
(1) There was no bad faith. The school had consented to the application. The L.E.A. agreed with registration. It was obvious why the Apps would seek to register a number of trade marks as each badge related to a different school.
(2) where a rights owner consented to have a mark registered by a third party, this did not breach s.3(1)(b). Even if the rights owner permits more than one supplier to make the goods, they still had to adhere to standards laid down by the organisation. Arsenal v Reed  RPC 46 referred to. (3) Following BABY DRY & DOUBLEMINT(ECJ), the question was whether the average consumer would view the mark as designating the essential characteristics of the goods. The purchaser would reconise the mark as indicating the clothing was manufactured to the school’s standards. It was loosely analagous with ‘badges of allegiance’ which were capable of registration. The opposition under s.3(1)(c) failed.
As was recognised, this case raises similar issues to sporting ‘badges of allegiance’ cases but concerns the more unusual subject matter of school badges. It also demonstrates the risks involved in alleging bad faith without supporting evidence. The Hearing Officer found that the opposition had “at its heart an allegation of bad faith which is a very serious charge and one which the opponent singularly failed to corroborate, indeeed the opponent did not make out a prima facie case.” Accordingly, the opponent was ordered to pay a sum by way of costs to the Applicants.