Rock on?

14th Oct 2019

This wasn’t the case for the Applicant, explains Louise Foster. O/363/19, ROCK CITY (Opposition), UK IPO, 1st July 2019.

Rock on?

O/363/19, ROCK CITY (Opposition), UK IPO, 1st July 2019

On 21st January 2015, White Outline Ltd (the Applicant) filed a UK series application for the marks in respect of “provision of sporting activities; provision of rock-climbing facilities and training; BMX park hire; skateboard park hire” in class 41.

DHP Family Ltd (the Opponent) opposed based on UK trade mark registration No 2623177 for the mark ROCK CITY covering “nightclub services; organisation, promotion and presentation of live performances; sporting and cultural activities” in class 41 claiming breach of ss5(1), 5(2) and 5(3), as well as s5(4)(a), of the Trade Marks Act 1994. 

The Opponent filed evidence demonstrating its activities as the ROCK CITY music venue since 1980, and also referred to six sporting events that had been held at the venue since 1997. A subsequent round of evidence attempted to show an association between skateboarding and music.

The Applicant’s evidence claimed that it had operated an indoor climbing centre in Kingston-upon-Hull since 1994 and an indoor skate park since 1996 under first ROCK CITY and, since 1997, ROCKCITY. On this basis, the Applicant claimed a defence of honest concurrent use of the respective marks for more than 22 years. 

The earlier registration was not subject to use requirements and so the Opponent could rely on all the services covered. The services applied for were found to be identical to the Opponent’s registered sporting and cultural activities. Having dismissed the Opponent’s claim that the marks were identical, the Hearing Officer (HO) carried out a global assessment and concluded that there was a likelihood of both direct and indirect confusion.

Honest concurrent use

For such a defence to apply, the HO must be satisfied that the parties had been trading such that the relevant public had been exposed to both marks and was able to differentiate between them without confusion, or that the circumstances were sufficiently exceptional that some confusion ought to be tolerated.

Reiterating that the Applicant’s mark conflicted with the Opponent’s in relation to the latter’s sporting activities, the HO stated a view that the handful of such events held at the Opponent’s venue was not sufficient to constitute an established period of coexistence. The exceptional circumstances that had allowed the Court in Anheuser-Busch (C-482/09) to find that the mark does not denote the origin of one undertaking alone could therefore not exist in this case. 

Thus the defence failed and the finding under s5(2)(b) succeeded.

Other grounds 

Considering the claims based on s5(3) and s5(4)(a), despite finding that the Opponent had reputation and goodwill in the mark for music events and nightclub services, it was not considered that the public would link these services and the provision of sporting activities by the Applicant, nor that a substantial number of the public would be deceived. The Opponent was not considered to have reputation or goodwill in relation to sporting activities. Thus, these grounds of opposition failed.

Registered rights

Despite having operated under its mark since 1994, the Applicant made no partial counterchallenge to the Opponent’s registered sporting activities on the basis of prior use. 

As honest concurrent use was not arguable in respect of the relevant services, the Application was rejected in its entirety.

Key points

  • The decision demonstrates the strength of having a trade mark registration and how useful it can prove in the five-year grace period 
  • The Opponent’s lack of use for sporting activities helped it to succeed in this case
  • The HO indicated that the evidence filed by the Applicant to demonstrate its use was not as comprehensive as it might have been

Louise Foster is a Chartered Trade Mark Attorney and European Trade Mark and Designs Attorney at AA Thornton & Co