Trade Marks Opposition Decision (0/018/01)
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TRADE MARKS ACT 1994 IN THE MATTER OF APPLICATION No 2057869 IN THE NAME OF FLYING SCOTSMAN RAILWAYS LIMITED AND IN THE MATTER OF OPPOSITION No 45472 THERETO BY THE DIRECTOR OF PASSENGER RAIL FRANCHISING & INTERCITY EAST COAST LIMITED TRADE MARKS ACT 1994 5 IN THE MATTER OF Application No 2057869 in the name of Flying Scotsman Railways Limited and 10 IN THE MATTER OF Opposition No 45472 thereto by The Director of Passenger Rail Franchising & Intercity East Coast Limited 15 BACKGROUND On 23 February 1996 Ameristar Limited, of West Chiltington, West Sussex, applied to register the trade mark shown below: 20 25 30 After examination the Trade Marks Registry accepted it for the following specification of goods and services. Class 09: 35 Video tapes, audio tapes, films, all relating to the Flying Scotsman; spectacle cases. Class 16: 40 Postcards, stationery, playing cards, jigsaw puzzles, pens, pencils, tablemats, stamps, posters, printed matter, publications; all relating to the Flying Scotsman. 45 Class 18: Leather articles, umbrellas, bags. 2 Class 21: Glassware, china mugs, porcelain giftware, miniature souvenir locomotive nameplates. 5 Class 25: Men's, ladies' and children's hats, scarves, sweaters, shirts, vests, jackets, coats, gloves, shorts, trousers, socks, footwear. 10 Class 28: Games, balloons, playthings, sporting articles, scale models. Class 35: 15 Advertising, promotions, posters, all to promote the activities of Flying Scotsman. The application was published and Notice of Opposition was filed on 25 September 1996 by The Director of Passenger Rail Franchising (hereinafter OPRAF) and InterCity East Coast 20 Limited (Joint Opponents). OPRAF is the Registered Proprietor of the trade mark registrations shown in the Annex to this decision; it is the successor in title to those registrations and all the associated goodwill from the British Railways Board, and in the case of registration no. 855445, from Allied Domecq Spirits and Wine Ltd. InterCity East Coast Limited is a train operating company and is registered as an exclusive licensee of some of the 25 trade marks. The Grounds of Opposition are, in summary, stated to be:- 1. Under the provisions of Section 3(6) of the Act - because the application was made in bad faith, with full knowledge of the true proprietorship and knowledge, from earlier correspondence with the British Railways Board, that any use by the applicant of the 30 trade mark FLYING SCOTSMAN would have been unlawful. 2. Under the provisions of Section 3(3)(b) - because the applicants' trade mark includes the words FLYING SCOTSMAN which are likely to deceive the public as to the origin of the goods and services. 35 3. Under the provisions of Section 5(2)(b) - because the trade mark applied for is similar to the opponents' earlier trade marks shown in the Annex to this decision; the trade marks are similar and some of the goods and services specified in the registrations being similar to those covered by the application for registration. 40 4. Under the provisions of Section 5(3) - because the applicant’s trade mark is similar to the opponents' earlier trade marks which have a reputation in the United Kingdom such that use of the later trade mark is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier 45 trade marks. 5. Under the provisions of Section 5(4)(a) - because of the opponents' common law rights in the trade marks THE FLYING SCOTSMAN and FLYING SCOTSMAN. 3 6. Under the provisions of Section 5(4)(b) - because use of the applicant’s trade mark would infringe copyright in the original design owned by the opponents. The applicant filed a counterstatement which in essence simply denied all of the Grounds of 5 Opposition alleged. It also claims that any fame associated with the term FLYING SCOTSMAN is primarily associated with the locomotive which carries that name and which they own and not with the train which travels between London Kings Cross station and Scotland and which is associated with one or both of the opponents. 10 In the course of the proceedings the application was assigned to Flying Scotsman Railways Ltd. Both sides sought an award of costs and both sides filed evidence in these proceedings. The matter came to be heard on 5 October 2000. The opponents were represented by Henry 15 Whittle of Counsel instructed by Frank B Dehn & Co, their Trade Mark Attorneys. The applicant was not present or represented. OPPONENT’S EVIDENCE 20 This consists of a Statutory Declaration by Mr Richard Woosnam dated 16 July 1997. Mr Woosnam is the Compliance Manager for Great North Eastern Railway Limited (GNER) and he is responsible for keeping and maintaining all company records including items of railway heritage. He has been employed by GNER since April 1994. 25 Mr Woosnam states that GNER was formerly named InterCity East Coast Limited. GNER is a registered licensee of THE FLYING SCOTSMAN trade mark, under the terms of a franchise from OPRAF, in respect of the registered trade marks shown in the Annex to this decision. He states that THE FLYING SCOTSMAN is nationally and internationally famous as the name of a train service between London and Edinburgh. It has been used to market that 30 service since 1862. To support these statements Mr Woosnam exhibits a number of extracts from various publications, including railway timetables which show that the term THE FLYING SCOTSMAN was the name of a train service running between Edinburgh and London for over 100 years. 35 Mr Woosnam goes on to state that since 1994 the trade mark has been used in conjunction with the provision of food and drink. To support this statement various items, including a brochure advertising first class tickets between 3 January and 25 February 1995, a menu, a paper napkin and a coaster printed with the name THE FLYING SCOTSMAN are exhibited (some also show use of this term with the thistle logo). 40 Mr Woosnam further states that for the period of 9 months between April 1995 and January 1996, InterCity East Coast Limited acquired and marketed various products under the name of THE FLYING SCOTSMAN and he exhibits some examples of the products bearing the term THE FLYING SCOTSMAN together with a thistle logo, these are a whisky tumbler, a T-shirt 45 and badges. Mr Woosnam states that all this material is evidence of the distinctive character and long history associated with THE FLYING SCOTSMAN trade mark which is associated with the train service rather than the locomotive. In that connection he exhibits at RW7 an official 4 British Rail Eastern Region souvenir named 'Cavalcade Reflections', which shows that a locomotive named FLYING SCOTSMAN was introduced in 1923 and was used to pull THE FLYING SCOTSMAN service between 1923 and 1963 when the locomotive was withdrawn. 5 Mr Woosnam concludes his declaration by stating that a Director of Ameristar (Miss Julia Cornborough) discussed the ownership of rights to the term FLYING SCOTSMAN by telephone with a member of the British Railways Board on 9 November 1994. A copy of a letter referring to this conversation, from Mr R S Kennington of Ameristar to Mr Peter Trewin, the Company Secretary to the British Railways Board, and a copy of Mr Trewin’s 10 response to this letter dated 30 December 1994, is exhibited. The letter from Mr Kennington states that Miss Cornborough made enquiries about the rights to the name FLYING SCOTSMAN and asked if the rights are still owned by the British Railways Board and if so whether they are available for purchase. She stated that she knew that the name THE FLYING SCOTSMAN, which applies to the 10.00am departure from Kings Cross is still in 15 use by InterCity East Coast but is interested in the name of the steam locomotive which was sold by the Company to Alan Pegler in 1963 and subsequently owned by Sir William McAlpine and now jointly with Peter Waterman. The response from Mr Trewin to Mr Kennington states that the British Railways Board owns the rights in relation to THE FLYING SCOTSMAN name which is the subject of registration number 1275682 and (then) 20 pending applications 1583537 and 1583538. The marks cover Class 39 (passenger transportation services) and Class 42 (catering Services) and that there is no intention to assign these rights to a third party. He goes on to say that there is a registered user agreement between the Board and Flying Scotsman Services Limited to enable them to use THE FLYING SCOTSMAN for the purposes of providing passenger transportation services. He 25 also states that the name of the locomotive should not be confused with the provision of a service under the same name and the Board’s rights do not extend to the named locomotive itself but only when the name is used in connection with the provision of a passenger transportation service or catering services. 30 APPLICANT’S EVIDENCE This consists of five Statutory Declarations. The first Declaration is by Anthony F Marchington from Oxford and is dated 16 April 1998. Mr Marchington states that he is a director and major shareholder of Flying Scotsman Railways Limited and that the evidence 35 given comes from his personal knowledge or from records of Flying Scotsman Limited. Mr Marchington states that by formal agreement dated 8 March 1996 his company, now called “Flying Scotsman Railways Limited”, purchased the FLYING SCOTSMAN railway locomotive engine and various other assets from a company whose controlling shareholders 40 were Sir William McAlpine and Mr Peter Waterman. As part of the purchase business names including FLYING SCOTSMAN were acquired.