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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 >> SWORDERS (Trade Mark: Inter Partes) [2006] UKIntelP o21206 (28 July 2006) URL: http://www.bailii.org/uk/cases/UKIntelP/2006/o21206.html Cite as: [2006] UKIntelP o21206 |
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For the whole decision click here: o21206
Result
Section 5(4)(a): Opposition successful. Section 3(6): Opposition failed.
Points Of Interest
Summary
Just prior to the Hearing an application was made to add further grounds of opposition and after a full consideration of the request a ground under Section 3(6) was allowed. A request to add other goods under Sections 3(1)(b), 3(3)(b) and a different ground under Section 3(6) was refused.
The background to these proceedings explains the nature of the dispute. Up until 1987 the business of G.E. Sworder & Sons operated as a partnership and carried on the business of estate agents and associated services. The business was also known as Sworder and Sworders. In 1987 the business was sold to Property Leeds (UK) Ltd and the business carried on under the name SWORDERS until November 1989 when Property Leeds decided to sell the business back to the original partners. At this stage the business and goodwill was divided up into five parts.
The business of estate agency carried on at Bishop’s Stortford was sold to Mr Robert Ward-Booth and others with the right to use the name G.E. Sworder and, with others, the right to use the name G.E. Sworder & Sons. Mr Arthur Vernon Muskett was sold the right to continue the “agricultural surveying and estate agency farm management etc” (a partner of the current opponent).
Initially all the parties in Bishop’s Stortford traded in co-operation and indeed occupied the same building. In 1997 Sworders Agricultural moved to new premises outside Bishop’s Stortford and Mr Maskett retired, selling his share of the business to Mr Hudson who became the sole owner (the current opponent).
The general estate agency at Sudbury was sold to Mr Alistair Munro and partner and with others was granted exclusive right to use the name “Sworders (Suffolk)”. Mr West (the current applicant) became a partner in 1991 and sole partner in 1999. The business expanded and now has three offices in the Sudbury area.
Only the latter two parties are involved in this dispute but the applicant claims an agreement or understanding with or least one of the other parties.
In addition to the filing of evidence the parties’ presented themselves for cross-examination. Central to the opponent’s ground under Section 5(4)(a) was the extent to which the opponent had become involved in general estate agency and land development so that his goodwill extended beyond the original agricultural business. After considering the evidence carefully the Hearing Officer decided that the opponent had proved such a reputation and thus if the applicant was to use the word SWORDERS on a general basis the public could well assume a connection between the businesses and thus cause damage to the opponent’s business. As no application had been made by the applicant to restrict the application to his area of current trade, the Hearing Officer found the opponent successful under Section 5(4)(a).
Under Section 3(6) the Hearing Officer was not convinced that the application had been made in bad faith. He accepted that the applicant had had a long established business and may have under the impression that exclusion of agricultural estate agency services was sufficient to avoid any dispute with the opponent. The opponent failed on this ground.
