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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> MARLENE (Trade Mark: Opposition) [1999] UKIntelP o09999 (31 March 1999) URL: http://www.bailii.org/uk/cases/UKIntelP/1999/o09999.html Cite as: [1999] UKIntelP o09999, [1999] UKIntelP o9999 |
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For the whole decision click here: o09999
Result
Section 11 - Opposition failed
Section 11 - Opposition failed
Section 12(3) - Opposition failed
Section 12(3) - Opposition failed
Section 17(1) - Opposition succeeded
Section 17(1) - Opposition succeeded
Points Of Interest
Summary
The opponents claimed sole entitlement to all intellectual property rights in the name and image of the late MARLENE DIETRICH, derived from her estate. The name MARLENE was invented by her and was a combination of her two forenames Maria Magdalene, thus, they say, that name is synonymous with Marlene Dietrich and most people encountering it would associate it with her.
The applicants, however, claimed that it was a Christian name used by many people and anyone should be free to apply for it. Because this issue was fundamental to the main grounds of opposition the Hearing Officer began by examining the facts relating to it.
Having done so, the Hearing Officer concluded that it was ‘an unusual or invented name clearly associated with one individual'. He therefore went on to consider the matter under Section 17(1), with that preliminary finding in mind. In this, the Hearing Officer had particular regard to the general observations and findings of Laddie J in the ELVIS PRESLEY case. Whilst bearing in mind that that case dealt principally with questions of distinctiveness (Section 9 & 10), he felt that in some respects those considerations overlap with the issue of proprietorship. If the name indicated a subject matter it must follow that others should be able to indicate the same subject by the same means. He therefore concluded that the applicants could not claim to be the proprietors of the mark and the opposition under Section 17(1) succeeded accordingly.
The Hearing Officer went on to consider, briefly, the other grounds. Under Section 11, he found nothing that pointed to any use of the name in relation to goods or services such as might support the objection. Under 12(3), he found that neither party had established a persuasive claim to have used the mark prior to the material date, but in view of his findings under Section 17(1) he did not think it necessary to have the matter referred to the Court in order to have the relative rights established.
An objection had also been raised based on Rule 18 of the Trade Marks and Service Marks Rules 1986, (which had in any case, been revoked). The Hearing Officer, however, declined to make a formal finding in relation to that ground. Finally, the Hearing Officer declined to exercise the Registrar's discretion in favour of the applicants.
