Trade Mark Opposition

A businessman in a small seaside town used to make and sell a well known local delicacy. He made the product in a factory unit just outside the town and sold it from a sales outlet in the centre which had an architectural feature that was a local landmark. The packaging in which he sold those products bore the image of that landmark. Though he never registered a trade mark, his goods became associated with that image.

He decided to retire and sold the factory to one person and the sales outlet to another. The business sale agreements were in identical terms and purported to sell the goodwill of the business to both purchasers. For a short time the two purchasers tried to work together, but they soon fell out. The purchaser of the retail outlet began to source his stock from outside the town.

The purchaser of the factory applied to register the image under which the goods had always been sold as a trade mark even though he had not bought the retail outlet. The purchasers of the retail side opposed the application under s.5 (4) of the Trade Marks Act 1994 claiming an earlier right. The purchasers of the retail side also applied to register a mark which was met by an earlier mark opposition from the purchaser of the factory. After some proceedings in the Registry the parties agreed to refer the dispute to mediation and appointed me as mediator.

I spent a day with the parties and their trade mark attorneys at one of the agent's offices. I managed to broker a deal that allowed both parties' trade mark applications to proceed with the co-operation of the other. My fee for the day was £500 plus VAT. I fixed it at that figure to encourage future mediation. It cannot be much higher because the costs recoverable in the Registry are limited to those in Annex A of Tribunal Practice Notice 2/2000 as amended by TPN 4/2007 and TPN 6/2008.