TRADE MARKS ACT 1938 (AS AMENDED) AND TRADE MARKS ACT 1994 IN THE MATTER OF APPLICATION No 1506039 BY GI JOE LTD TO REGISTER A MARK IN CLASS 25 AND IN THE MATTER OF OPPOSITION THERETO UNDER No 38138 BY HASBRO UK LIMITED TRADE MARKS ACT 1938 (AS AMENDED) AND TRADE MARKS ACT 1994 5 IN THE MATTER OF Application No 1506039 by GI Joe Ltd to register a mark in Class 25 and 10 IN THE MATTER OF Opposition thereto under No 38138 by Hasbro UK Limited 15 DECISION On 10 July 1992 GI Joe Ltd applied under Section 17 of the Trade Marks Act 1938 to register the following mark for a specification of goods which reads “sportswear, rugby tops, sweat 20 shirts, T-shirts, jogging bottoms, shorts; all included in Class 25” 25 30 The application is numbered 1506039. On 24 December 1993 Hasbro UK Limited filed notice of opposition to this application. The 35 grounds of opposition are in summary as follows:- (i) under Section 11 by reason of the fact that use of the mark applied for will lead to deception and confusion having regard to the opponents’ reputation and particularly its licensing activities; 40 (ii) under Section 17 in that the opponents’ marks are so well known that the applicants cannot claim to be the proprietor of the mark at issue. They also ask that the Registrar refuse the application in the exercise of his discretion. The 45 opponents have also referred in their statement of grounds to two registrations in Class 28 but I do not understand them to claim that these constitute an objection under Section 12. 2 The applicants filed a counterstatement denying the above grounds. Both sides ask for an award of costs in their favour. Both sides filed evidence in these proceedings. Neither side has requested a hearing but extensive written submissions have been made in lieu thereof. Acting on behalf of the Registrar and after a careful study of the papers I give this decision. 5 By the time this matter came to be decided, the Trade Marks Act 1938 had been repealed in accordance with Section 106(2) and Schedule 5 of the Trade Marks Act 1994. In accordance with the transitional provisions set out in Schedule 3 to that Act however, I must continue to apply the relevant provisions of the old law to these proceedings. Accordingly, all references 10 in the later parts of this decision are references to the provisions of the old law. Opponents’ evidence (Rule 49) The opponents filed a statutory declaration dated 10 January 1995 by Jane Ritson, the 15 Managing Director of 3-D Licensing Ltd, a subsidiary of Hasbro UK Ltd. Her company is responsible for out-licensing in the United Kingdom and elsewhere the products of Hasbro UK Ltd. She says that G.I. JOE has been used as a trade mark in the US since at least 1964. Childrens’ 20 toy products bearing the mark have been sold in the UK since at least 1990 and are available through a large number of retail outlets. Sales figures are given as follows: £ 25 1990 4,223,000 1991 2,128,000 1992 2,253,000 1993 1,182,000 1994 3,000,000 approx 30 In support of this Ms Ritson exhibits (1-4) various brochures and samples of advertising material. The product line has been advertised on television and the G.I. JOE characters have been the subject of a number of childrens’ cartoon video films. Sample video box covers are at Exhibit 5. The BSkyB movie channel has also broadcast a number of G.I. JOE films. 35 Ms Ritson concludes from all this that G.I. JOE is one of the Hasbro Group’s most important trade marks in the United Kingdom, the extensive use having led to it becoming known to many children and their families. She adds that:- “Hasbro’s activities also extend to collateral licensing in the field of what is now 40 known as “character merchandising”. In addition to taking licences from third parties in relation to their famous characters (STAR TREK and JURASSIC PARK are just two of the famous brands for which Hasbro has taken a licence), Hasbro Group Companies (including the Opponents) actively out-licence the intellectual property rights in their toy products. That the Hasbro Group Companies are major licensors of 45 their rights is common knowledge throughout the industry and, more importantly, amongst members of the public, contrary to the denial of this fact contained in the Applicant’s counterstatement.” 3 The claim outlined in the above passage is then supported by details of the range of goods licensed under other Hasbro marks such as SINDY, ACTION MAN, TRANSFORMERS and PLAYSKOOL. I do not need to record the details here. Suffice to say that it covers a variety of licensed products and is supported by Exhibits 6 to 12. 5 In relation to G.I. JOE Ms Ritson says:- “Although G.I. JOE has not yet been fully licensed in the United Kingdom, it has been extensively licensed in other territories. In the United States the range of licensed 10 goods includes clothing, spinning tops, vending machine trading cards, plastic drink ware, plastic sports bottles, dinnerware, activity and educational place mats, Halloween costumes, video products, sleeping bags, tent sets, lunch kits, scuba gear, watches, bicycles and bicycle helmets, printed matter and comic books, footwear, paper party goods, socks, aquariums, decorator storage cubes, kites, .. flying discs, 15 rubber balls, children’s hangers, shoe horns, hand-held electronic LCD games, sleepwear and watergun goods. The mark has also been exploited in Portugal, Greece, Cyprus, Australia and for certain goods, on a worldwide basis.” [Exhibits 13 to 22 show examples of G.I. JOE licensed goods.] 20 “I accept that, in the United Kingdom at least, G.I. JOE has not yet been licensed in relation to clothing. However, I submit that this is irrelevant. The fact is that, generally, customers are aware that goods in the toy and entertainment fields are now customarily exploited by licensing into other fields and that clothing is one of the most common 25 fields into which such licenses are granted. Thus, on that basis alone, it is reasonable to expect that purchasers of goods in those fields generally associated with character merchandising will assume that if one of Hasbro’s trade marks appears on the product (for example G.I. JOE) then there is some connection with Hasbro. Furthermore, the purchasing public is aware that Hasbro Group Companies 30 customarily licence their products, since all products bearing brands licensed from Hasbro Group Companies bear appropriate statements either on the goods or on the packaging indicating that the brand is the property of the relevant Group Company. Thus members of the public knowing Hasbro’s G.I. JOE brand will inevitably assume that clothing goods bearing that mark are licensed from or otherwise approved or 35 authorised by Hasbro UK Limited.” Finally Ms Ritson comments on the markets for the parties’ respective goods and concludes that there is an overlap and that the public (particularly children) being used to merchandising activities will assume that the applicants’ goods are in some way authorised or approved by 40 Hasbro UK Ltd. Applicants’ evidence (Rule 50) The applicants filed a statutory declaration dated 8 November 1995 by Nohinder Singh, the 45 Managing Director of G.I. JOE Ltd. He says that his company has used G.I. JOE as its trade mark since August 1992. In relation to the adoption of the mark he says:- 4 “..... before commencing use of this name a full availability search was conducted, which did not reveal any trade marks which were sufficiently similar to G I JOE to cause problems with either use or registration of the Trade Mark. 5 The inspiration for the name G I JOE came from the United States where I worked for about four and a half years between 1983 and 1987. I was working in Portland, Oregon and in that town there was a shopping mall where my family used to shop each week. In the mall there was a departmental store called G I Joe’s. The G I Joe’s store sold many goods including clothing. 10 There is now produced and shown to me market “Exhibit GI1-A” an advertisement paper, a bag, a receipt, and a T-shirt all obtained recently from this store together with an extract from the telephone directory listing a number of the G I Joe’s stores.” 15 He goes on to give dictionary and other references in confirmation of the fact that GI JOE has the meaning of “an American soldier” and provides various exhibits in support of use of the term. In response to the opponents’ declaration giving details of their licensing activities he comments that:- 20 “Only use of PLAYSKOOL and ACTION MAN has been claimed in respect of articles of clothing. It has been shown in case law (BLAZER TM - Blazer plc v Yardley & Co Ltd) that merely having a licence to produce and sell a product is not sufficient if no use has been made of an unregistered/unused trade mark. It appears to me from the Statutory Declaration of The Opponents that they have never used the name G I JOE 25 on articles of clothing in the UK. My Company however has used the Trade Mark continuously since 1992 and has built up a substantial reputation in the name as is illustrated in the foregoing.” The remainder of Mr Singh’s declaration is taken up with an account of the applicants’ trading 30 activities since August 1992.