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.

Mr Marchington states that he is aware of the history associated with THE FLYING SCOTSMAN train (i.e. the service running between Kings Cross and Scotland) and the 45 FLYING SCOTSMAN locomotive. There is literature, which discusses the train which usually refers, in part, to the locomotive. He states that the majority of the literature with regard to the train is old and tends to discuss times when important travel records were broken by the train and locomotive. By way of example he exhibits the opening pages of a publication "The Flying Scotsman 1862-1962" by Hamilton Ellis. Mr Marchington then goes on to give

5 his view that any fame attached to the train service is associated with relatively early times, when records were being broken. But it is the FLYING SCOTSMAN locomotive which has been much more widely written about, promoted, publicised and otherwise brought to the public’s attention. By way of example Mr Marchington lists twelve videos relating to the 5 locomotive. To support this assertion he exhibits at AFM2 copies of the sleeves of eleven of the twelve videos referred to. From the information provided on these sleeves it is clear that the videos (which seem to be produced by a variety of parties) are about the FLYING SCOTSMAN locomotive.

10 Also exhibited is a selection of leaflets, extracts from books, photographic prints, a copy of a painting, a photocopy of tea towels, extracts from magazines all relating to or containing representations of the FLYING SCOTSMAN locomotive. Mr Marchington states that the copy of the opening pages from Silver Link Publishing on the FLYING SCOTSMAN, published in 1988, is noteworthy. This contains a quote which states “Together with 15 Stephenson’s Rocket (prototype of the modern steam locomotive), and Mallard, (the fastest of them all), Flying Scotsman ranks as the most famous locomotive in the world...”. Mr Marchington further states that various merchandise has been sold with reference to the FLYING SCOTSMAN but no examples are provided or supporting information given.

20 The Second Statutory Declaration is by David Ward and is dated 2 April 1998. Mr Ward states that he is authorised to make this declaration on behalf of Flying Scotsman Railways Limited and that the information provided comes from records or from his personal knowledge. He states that he joined British Rail in 1948 and served for 45 years before retiring in 1994. He states that for the last ten years he was Director of Special Trains and 25 explains that special trains are trains which are not in the normal timetable. He is currently Chairman of the Trustees of Bressingham Steam Museum and Garden Trust who operate a steam museum. He is also the Operations Manager of Flying Scotsman Railways Limited which he undertakes on a voluntary, unpaid basis. He believes that he has acquired a good knowledge of the industry and associated matters. 30 Mr Ward comments upon the distinction between THE FLYING SCOTSMAN train and the locomotive or engine of the same name and provides some facts and views about the locomotive FLYING SCOTSMAN and the train named THE FLYING SCOTSMAN.

35 The third Statutory Declaration is by Mr Ronald Kennington and is dated 17 April 1998. Mr Kennington states that he has been Chief Mechanical Engineer on the FLYING SCOTSMAN locomotive for more than 10 years and is currently contracted to Flying Scotsman Railways Limited and is in charge of the restoration of the locomotive. He states that he has had an interest in steam locomotives since he was a boy. His understanding of 40 Mr Trewin's letter dated 30 December 1994 addressed to him and referred to in Mr Marchington's Statutory Declaration was that the British Railways Board had no rights in relation to the name of the locomotive itself and that any rights they did have related only to the name THE FLYING SCOTSMAN in connection with the provision of passenger transportation and catering services. He concludes his declaration by stating that since his 45 interest was solely in relation to the locomotive the British Railways Board's letter to him did not seem relevant to the proposed activities of his company.

The fourth Statutory declaration is by Mr Anthony Paul Brierly of Appleyard Lees. He states that he is a Chartered Patent Attorney, European Patent Attorney and Registered Trade Mark

6 Attorney, that the evidence comes from records available to him and/or his personal views and that he is authorised to make this declaration on behalf of Flying Scotsman Railways Limited.

Mr Brierley exhibits at APB1 to his declaration extracts from an in-house Trade Mark 5 searching system (Marquesa) detailing other registrations of the term FLYING SCOTSMAN namely registration No. 1490675 and 195683 which are not owned by the opponents in these proceedings. I note they are not owned by the applicant either and the goods covered by those registration’s are fountain solutions in Class 1 and flour in Class 30, respectively.

10 The final declaration is by Mr Richard Waddington of Appleyard Lees. He states that he is a Trade Mark Agent working at the Halifax office of Appleyard Lees, the Trade Mark Agents for Flying Scotsman Railways Limited. He states that he is authorised to make the declaration on behalf of the company and the facts in his declaration come from his personal knowledge or experience. 15 Mr Waddington explains that he carried out a survey on 25 February 1998 on the streets of Halifax town centre to assess whether members of the public recognised FLYING SCOTSMAN as the name of an old steam locomotive or of a train that travels between London and Edinburgh. I do not intend to summarise the results because I do not intend to 20 take them into account in reaching my decision. The survey does not conform at all with the established guidelines for such surveys as set down by Mr Justice Whitford in RAFFLES trade mark [1984] RPC 293.

OPPONENT’S EVIDENCE IN REPLY 25 This consists of a Statutory Declaration dated 19 November 1998 by Richard Woosnam, the same Richard Woosnam who has already made a Declaration in these proceedings.

He states that in 1963 the British Railways Board, proprietors at that time of all property 30 vested in the nationalised railway system, sold to Mr Alan Pegler, together with other rolling stock, a London & North Eastern Railways A3 Pacific No. 4472 steam locomotive named FLYING SCOTSMAN. This was the only physical entity that changed hands in the above mentioned transaction, there being no simultaneous assignment of any other rights in the FLYING SCOTSMAN name. He then refers to the correspondence between Mr Peter 35 Trewin and Mr Roland S Kennington and states that he does not understand Dr Anthony F Marchington’s comment in paragraph 1 of his declaration where he states “he acquired the business names, including Flying Scotsman”. No evidence surrounding this transaction is provided and the comment is therefore misleading.

40 The FLYING SCOTSMAN, Mr Woosnam states, was named after the train service in 1925. It is evident, he states, that the service whether named or nicknamed had been running daily as a service for nearly half a century before the locomotive was named and he exhibits copies of extracts from “Locomotives of the L&NER – Part 1 Preliminary Survey, (1963) and Part 2A/2B (1973)" and also another page from "The Worlds Most Famous Steam Locomotive 45 Flying Scotsman" showing that the locomotive was named with “reference to the long standing…express of the same name that had been in popular use since about 1862”. He states that both show that the locomotive No.4472 was named after the name of the train service. Therefore, he states, any reference to the term FLYING SCOTSMAN use of which pre-dates 1925 must solely refer to the train service run by the opponents and their

7 predecessors. In that connection he estimates that over 2 Million people will have used the service in the period 1986-1996 representing a turnover of £88,000,000.

That concludes my review of the evidence so far as I think it relevant in these proceedings. 5 DECISION

First of all, I deal with the Ground of Opposition based upon Section 3(3)(b). There have been numerous decisions by the Trade Marks Registry which indicate that it considers an 10 objection under this head to be one based upon Absolute Grounds and requires evidence from a would-be opponent to substantiate this. There is nothing inherently deceptive about the term FLYING SCOTSMAN in relation to the goods and services covered by the application and no evidence has been put forward to that affect. I therefore dismiss the Ground of Opposition. 15 Mr Whittle, in his submissions, also referred to potential objections based upon other sub-sections of Section 3 which the Registrar, he considered, ought to take note of as observations because they have come to her attention prior to the registration of the application (but after acceptance of the application) and should result in any event in the 20 refusal of this application. As far as I am concerned any observations which Mr Whittle or his clients might have should be directed outwith these proceedings to that part of the Trade Marks Registry which deals with the examination of applications for registration. Or, in the event that this application is registered, file an application to have the registration declared invalid under the provisions of Section 47(1) of the Act. My only concern are the pleadings 25 and evidence filed by the parties in these opposition proceedings and on which I have to determine this matter. I propose to make no further comment on that aspect of Mr Whittle's submissions.

The first substantive Ground of Opposition is based upon Section 5(2)(b) of the Act which 30 states as follows:

"5.-(2) A trade mark shall not be registered if because -

(a) ..... 35 (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,"

In considering objections under this head I take account of the following guidance from the 40 European Court of Justice (ECJ) in Sabel BV v Puma AG (1998 RPC 199 at 224), Canon v MGM (1999 ETMR 1) and Lloyd Schufabrik Meyer & Co GmbH v Klijsen Handel BV (1999 ETMR 690 at 698) and Marca Mode CV v Adidas AG & Others (2000 ETMR 723):

(a) the likelihood of confusion must be appreciated globally, taking account of all 45 relevant factors;

(b) the matter must be judged through the eyes of the average consumer, of the goods/services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant - but who rarely has the chance to make

8 direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind;

(c) the average consumer normally perceives a mark as a whole and does not 5 proceed to analyse its various details;

(d) the visual, aural and conceptual similarities of the marks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components; 10 (e) a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa;

(f) there is a greater likelihood of confusion where the earlier trade mark has a 15 highly distinctive character, either per se or because of the use that has been made of it;

(g) mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient for the purposes of Section 5(2); 20 (h) but if the association between the marks results in a likelihood that the average consumer will wrongly believe that the respective goods come from the same or economically linked undertakings, there is a likelihood of confusion within the meaning of the Section; 25 (i) a positive finding of a likelihood of confusion is required; even where the earlier mark enjoys a reputation with the public, it is not sufficient to find that confusion cannot be ruled out because of a likelihood of association.

30 I first of all deal with the respective trade marks which consist for comparison purposes primarily of the words THE FLYING SCOTSMAN or FLYING SCOTSMAN. Two of the opponents' trade marks contain devices of thistles which are the subject of voluntary disclaimers and in accordance with the decision in PACO/PACO LIFE IN COLOUR [2000] RPC 451, I take no account of those elements in my comparison. The trade marks on this 35 basis therefore are very similar.

As Mr Whittle indicated the next step involves the comparison of the goods covered by the application for registration with the services covered by the opponents' registrations. In that regard, goods and services can never be identical and in judging whether the goods are similar 40 to the services it is essentially a judgement as to whether the public would regard the possibility that both the goods and the services came from the same (or associated) sources such that if the respective trade marks were similar, the likelihood of confusion would occur.

Mr Whittle submitted that in this case there was a strong common factor between the 45 opponents' services and the applicant's goods in that both were concerned with railways. The opponents provided railway transportation services and the applicant was the owner of the FLYING SCOTSMAN locomotive which had at one time been associated with the opponents' services. Further, a significant number of the applicant's goods and services were limited to goods and services associated with the FLYING SCOTSMAN. That limitation brought them

9 directly within the ambit of the opponents' services because there was every likelihood that the public, on the basis of modern promotional trends, would expect that the providers of a train service would also provide promotional type goods under the same trade mark. Indeed, as he pointed out, the evidence showed that the opponents already supplied goods bearing the trade 5 mark on such things as whisky and cut-glass tumblers, t-shirts and badges, all of which bore the registered trade mark. With that in mind Mr Whittle submitted that the goods and services for which registration was sought could be the same as goods involved in the normal course of the provision of the services provided by the opponents under their trade mark.

10 In my view it is inconceivable that the goods covered by the application for registration would be considered similar to the services provided by the opponents. I accept that some of the goods and services covered by the applicant's application for registration could be used by the opponents in the provision of their services eg tablemats and posters, glassware and china, but that would be no more than as an adjunct to the provision of the service and not as use of a 15 trade mark denoting a badge of origin. In that connection I draw upon the views of Mr Simon Thorley QC sitting as a Deputy High Court Judge in Pfizer Ltd v Euro Food-Link (UK) Ltd (ChD) [1999] 22(4) IPD 22039 at paragraph 29, and dealing with Article (5)(1)(b) of Directive 89/104 upon which the Trade Marks Act 1994 is based (Article 5(1)(b) corresponds with Section 5(2)(b) of that Act) where he states: 20 "As indicated above there may be a substantial dissimilarity between the goods in question and yet proof of confusion. If the Court is satisfied as to confusion then the relief is granted notwithstanding the measure of dissimilarity between the goods. It must however be remembered at all times that the nature of the confusion must be 25 proved is confusion as to origin. The more dissimilar the goods the harder it will be to prove this form of confusion. For example, the public are not readily going to be confused between (say) ball bearings and perfumes, no matter how similar the trade marks."

30 In my view, though the distinction is not so stark as that set out in Mr Thorley's decision, there is in my view a significant difference between the goods and services covered by the application for registration and the opponents' services such that there is unlikely to be any confusion as to the origin of either of them no matter how similar the trade marks, which in this case are very similar. However, I go on to consider whether, notwithstanding that view, 35 the opponents have acquired such a reputation in their trade mark for the provision of railway passenger services and catering that the public at large would associate the goods with them.

Certainly the opponents have a considerable reputation in the term THE FLYING SCOTSMAN in connection with the railway service between Edinburgh and London and 40 which has operated for over 100 years. I am satisfied that all of the claims they make as to this reputation have been substantiated through the various publications and the figures provided for the amount of revenue earned on that service. Even so, I do not believe that the substantial reputation in the term THE FLYING SCOTSMAN accruing to the opponents is such as to displace my view that the public would not associate the goods and services of the 45 applicant with the services provided by the opponent. And I am reinforced in that view by the fact that other trade marks for FLYING SCOTSMAN for goods which are similarly dissimilar to the services of the opponent are on the register. Although the state of the register could be said to be irrelevant in determining whether or not the public are likely to be confused or not (TREAT [1996] RPC 281) I do not ignore it entirely in this case. Having therefore considered

10 the matter globally, in respect of the trade marks, in respect of the goods and services and the reputation both of the opponents and the applicants, I conclude that the registration of the applicants' trade mark is not likely to result in the likelihood of confusion on the part of the public. That Ground of Opposition therefore fails. 5 The next Ground of Opposition is based upon Section 5(3) of the Act which states:

"5.-(3) A trade mark which -

10 (a) is identical with or similar to an earlier trade mark, and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,

15 shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark." 20 The relevant cases here are Sabel v Puma [1998] RPC 199, Premier Brands Ltd v Typhoon Europe Ltd [2000] 23(5) IPD 23038, Corgi trade mark [1999] RPC 549 and CA Sheimer (M) SDN BHD's trade mark (the VISA trade mark) [2000] RPC 484. These establish that in considering matters under this head there is no need to establish likelihood of confusion. What 25 has to be determined is that use by the applicant of the trade mark in suit is without due cause and could be termed parasitic, or in some way effect the distinctive character of the opponents' trade mark.

Given my finding under Section 5(2)(b) I have no difficulty in holding that the applicant's 30 goods and services are dissimilar from the services provided by the opponentS. Also, I have no difficulty in acknowledging the opponents' reputation for the services they provide under their trade mark. However, I have no evidence before me that the applicant is using the trade mark FLYING SCOTSMAN logo without due cause. It seems to me that the British Railways Board sold the locomotive to the then purchaser in 1963, at which time they 35 indicated that all their rights in the term THE FLYING SCOTSMAN related to rail and catering services, there therefore is no prima facie reason why the applicant should not use the term FLYING SCOTSMAN in connection directly with the historic locomotive that they own. It does not seem to me, again from the evidence before me, that their actions in seeking to register the trade mark for the goods and services in question could in any way be described as 40 parasitic (in terms set out by Mr Geoffrey Hobbs QC in the VISA case) less so is there any likelihood of any effect upon the distinctiveness of the opponents registered trade mark. No more so than the effect of the other registrations for the term FLYING SCOTSMAN which are already on the register.

45 Mr Simon Thorley QC in Pfizer Ltd v Euro Food-Link (UK) Ltd as mentioned above said at paragraph 31 of his judgment:

"What is necessary is that the trade mark proprietor should prove the required reputation and should then satisfy the Court that the defendants use of the sign is:

11 (a) without due cause; and

(b) takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark." 5 In this case, the opponents have not shown either (a) or (b) and this Ground of Opposition is also dismissed.

I turn to the Ground of Opposition based upon Section 5(4) of the Act which states: 10 "5.-(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented -

(a) by virtue of any rule of law (in particular, the law of passing off) protecting an 15 unregistered trade mark or other sign used in the course of trade, or

(b) by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) above, in particular by virtue of the law of copyright, design right or registered designs. 20 A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an “earlier right” in relation to the trade mark.”

In considering matters under Section 5(4)(a) I bear in mind the comments of Mr Geoffrey 25 Hobbs QC in WILD CHILD trade mark [1998] RPC 455:

"A helpful summary of the elements of an action for passing off can be found in Halsbury's Laws of England 4th Edition Vol 48 (1995 reissue) at paragraph 165. The guidance given with reference to the speeches in the House of Lords in Reckitt & 30 Colman Products Ltd v Borden Inc [1990] RPC 341 and Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] ACT 731 is (with footnotes omitted) as follows:

"The necessary elements of the action for passing off have been restated by the House of Lords as being three in number: 35 (a) that the plaintiff's goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;

(b) that there is a misrepresentation by the defendant (whether or not 40 intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and

(c) that the plaintiff has suffered or is likely to suffer damage as a result of 45 the erroneous belief engendered by the defendant's misrepresentation."

The restatement of the elements of passing off in the form of this classical trinity has been preferred as providing greater assistance in analysis and decision than the formulation of the elements of the action previously expressed by the House. This

12 latest statement, like the House's previous statement, should not, however, be treated as akin to a statutory definition of

10 "To establish a likelihood of deception or confusion in an action for passing off where there has been no direct misrepresentation generally requires the presence of two factual elements:

(a) that a name, mark or other distinctive feature used by the plaintiff has acquired 15 a reputation among a relevant class of persons; and

(b) that members of that class will mistakenly infer from the defendant's use of a name, mark or other feature which is the same or sufficiently similar that the defendant's goods or business are from the same source or are connected. 20 While it is helpful to think of these two factual elements as successive hurdles which the plaintiff must surmount, consideration of these two aspects cannot be completely separated from each other, as whether deception or confusion is likely is ultimately a single question of fact. 25 In arriving at the conclusion of fact as to whether deception or confusion is likely, the court will have regard to:

(a) the nature and extent of the reputation relied upon; 30 (b) the closeness or otherwise of the respective fields of activity in which the plaintiff and the defendant carry on business;

(c) the similarity of the mark, name etc used by the defendant to that of the 35 plaintiff;

(d) the manner in which the defendant makes use of the name, mark etc complained of and collateral factors; and

40 (e) the manner in which the particular trade is carried on, the class of persons who it is alleged is likely to be deceived and all other surrounding circumstances.

In assessing whether confusion or deception is likely, the court attaches importance to the question whether the defendant can be shown to have acted with a fraudulent 45 intent, although a fraudulent intent is not a necessary part of the cause of action."

In considering the matter under this head I bear in mind that the opponents have an established reputation for the provision of railway services under the name THE FLYING SCOTSMAN.

13 Also that the applicants own a historic locomotive which was named after that service and which seems also to have acquired a degree of fame as such.

As already indicated earlier, I consider that the applicant's and the opponents' trade marks to 5 be similar. Each consist of, or predominantly of, the words FLYING SCOTSMAN. The respective goods and services are however not similar, as I have already held. But, in relation to a number of the classes of goods and services the applicant has sought to limit to; "all relating to The Flying Scotsman". This is, of course, the name of the opponents service which I have already held has a significant reputation, but it is also the name of the historic 10 locomotive which the applicants own. Thus, it seems to me that the applicant having acquired the historic locomotive is seeking to take advantage, commercially, of its restoration etc. In that connection, as indicated earlier, I believe they have due cause to use the name FLYING SCOTSMAN. Indeed, as Mr Whittle himself pointed out at the hearing, his clients would probably not have any objection to their use of the words FLYING SCOTSMAN, with or 15 without a logo, in relation to the historic locomotive. Though the applicant's specification goes wider than goods and services related to the historic locomotive itself, and as already indicated earlier in this decision, I do not believe that the public at large will as a result be deceived as to the origin of the respective goods and services. Therefore there will be no misrepresentation. Nor will the opponent suffer any damage. That being so I do not consider 20 that the opponents' can prevent the registration of the applicant's trade mark under the law of passing off. The opposition under Section 5(4)(a) therefore fails.

Insofar as Section 5(4)(b) is concerned, there is no evidence or submissions made which suggest that anyone's copyright has been infringed here. This ground of opposition is also 25 dismissed.

The final Ground of Opposition is based upon Section 3(6) which states:

"3.-(6) A trade mark shall not be registered if or to the extent that the application is 30 made in bad faith."

The application in this case was not, in my view, made in bad faith. I have already held above that the applicants use of the words FLYING SCOTSMAN is not without due cause. By the same token, I am not persuaded that they have trespassed into the area described in Gromax 35 Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367:

"I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and, as I would hold, includes also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the 40 particular area being examined. Parliament has wisely not attempted to explain in detail what is or is not bad faith in this context; how far a dealing must so fall-short in order to amount to bad faith is a matter best left to be adjudged not by some paraphrase by the courts (which leads to the danger of the courts then construing not the Act but the paraphrase) but by reference to the words of the Act and upon a regard 45 to all material surrounding circumstances."

Much was made in the evidence and at the hearing about the exchange of correspondence between the parties which, it was said, made it clear that the applicants had no right to the use of the term FLYING SCOTSMAN as a business name. However, I do not believe that the

14 matter is as clear-cut. The allegation that an application has been made in bad faith, which although it can be found even where the applicant is unaware of a situation in which an application was so made, still requires to be, in my view, fully made out before a positive finding can be made. I am not so satisfied in this case that it could be said that the applicant 5 made the application in bad faith given my findings above. In the circumstances this Ground of Opposition is also dismissed.

The opponents have failed on all grounds and the applicant is therefore entitled to a contribution towards their costs. I therefore order the opponents to pay to the applicant the 10 sum of £400. This sum to be paid within seven days of the expiry of the appeal period or within seven days of the final determination of this case if any appeal against this decision is unsuccessful.

Dated this 11 day of January 2001 15

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M KNIGHT For the Registrar 25 the Comptroller-General

15 Annex

Registration No Mark Class

5 1275682 THE FLYING SCOTSMAN 39

Specification

Transportation of passengers and their luggage; arranging for the transportation of passengers; 10 ticket booking, seat and berth reservation services; all included in Class 39; all involving Scotland as a starting point or destination.

Registration No. Mark Class

15 1583537 39

20

Specification 25 Transportation of passengers, passengers' vehicles and passengers' luggage; luggage storage services; vehicle parking services; arranging the transportation of passengers; escorting of travellers; ticket booking and seat and berth reservation services; timetable enquiry services; travel agency; tourist agency; travel information services; vehicle rental and charter; all relating 30 to travel to, from or within Scotland; all included in Class 39.

Registration No. Mark Class

35 1583538 42

40

Specification

45 Catering services; all included in Class 42.

16 Registration No Mark Class

855445 FLYING SCOTSMAN 33 5 Specification

All goods included in Class 33.

17