Norton Motorcycle Co. Ltd (“the opponent”) acquired the assets (including trademarks) and goodwill of its predecessor in title in April 2020 from its directors. The company under administration had traded in motorcycles for the past 100 years under the name “NORTON” in various guises. The opponent opposed the application for registration “NORTON MOTORCYCLE RACING”, filed in July 2020 by Norton Motorcycle Racing Limited (hereinafter the “applicant”), relying on two earlier word marks NORTON and a third mark (of series) NORTON/NORTON (stylized), all registered for goods of Class 12.
The opposition was based on sections 5(2)(b), 5(3), 5(4)(a) and 3(6) of the Trade Marks Act 1994 (the “Act”).
Article 5(2)(b) – likelihood of confusion
The opposition succeeded on the ground based on Article 5(2)(b), concluding that there was a likelihood of direct confusion on the basis of the similarity of the marks and the identity of the goods in question. The Hearing Officer declined to find enhanced distinctiveness for the opponent’s earlier marks, stating that the opponent had not provided details of recent UK sales, advertising expenditure or share of market in the United Kingdom for goods bearing the registered trade marks. This was the case notwithstanding the provision of a witness statement setting out a very detailed history of the use of the earlier marks (including extensive media coverage referring to the marks) since 1898.
Article 5(3) – reputation
The opposition failed on the ground of Article 5(3) based on the absence of evidence of market shares, sales figures and investments in the advertising and promotion of goods bearing the earlier marks submitted in support of the opposition. Although intermittent use of the marks over a long period of time was accepted (which was, for example, sufficient to support a finding of goodwill, as discussed in more detail below), it was not sufficient to support a finding of renown in the UK.
Paragraph 5(4)(a) – misleading imitation
Despite deficiencies in the evidence, the Hearing Officer was able to establish the value of UK sales from 2013 to 2018 (based on the percentage of international sales reported in an article around the relevant time and overall sales figures provided by the opponent). This found that there was a small but protectable residual goodwill on the date of the application in July 2020. The Hearing Officer found that a significant number of members of the relevant public would mistakenly buy the products of the applicant thinking they were the opponent’s products. . Accordingly, he found that the damage resulting from the diversion of sales was “easily foreseeable”. The ground of opposition based on Article 5(4)(a) was therefore upheld.
Section 3(6) – bad faith
Alternatively, the opponent argued that the applicant filed the application in bad faith. Whether the claimant acted in bad faith must be assessed globally, taking into account all factors relevant to the case at hand (Sky Limited & Ors v Skykick, UK Ltd & Ors,  EWCA Civil 1121). The intention of the applicant on the date of filing of the application must be taken into account. In this case, the opponent’s predecessor in title had entered the administration at the beginning of 2020, a fact widely reported in the British press. Shortly thereafter, in early February 2020, Plaintiff’s Sole Director incorporated Plaintiff and four other companies whose names all included “Norton”. “Cease and desist” letters were then sent to Plaintiff’s director, and then again after the Opponent acquired the Opponent’s business and goodwill in April 2020. Plaintiff then registered several domain names incorporating the word NORTON (in July 2020). In view of the facts, the Hearing Officer considered that the applicant was very likely to have been aware, at the date of filing of the application, of the opponent’s business and of the related rights in the mark NORTON. Therefore, the Hearing Officer considered that the purpose of the request was likely to be to prevent the opponent/any future acquirer of the business from competing with the applicant’s own company in the same field and/or from benefiting from a association with the business of the original historic company. All of this created a rebuttable presumption of bad faith on the part of the plaintiff on the date of the filing of the opposing claim.
It should be noted that the plaintiff did not file any evidence, but the counter statement filed asserted that the opponent had no trademark or goodwill related to the motorcycle racing business. The Hearing Officer rejected this request, the opposing mark having been filed for “motorcycles”. The applicant has not explained the reasons for filing the mark and therefore rebuts the presumption of bad faith. The opposition has therefore also succeeded in this field.
This decision is a useful reminder to rightholders that, in order to establish the recognition and reputation of a mark, tangible evidence of use must be produced. A factual history of use, no matter how extensive and publicized, is no substitute for such evidence.
With respect to bad faith, the applicant’s questionable behavior established a presumption of bad faith which she was unable (or failed) to rebut. Nevertheless, the Hearing Officer dismissed the Opponent’s request for “out of schedule” costs, stating that it could not be established that the Applicant’s conduct was intended to increase the Opponent’s costs for the purpose of enhanced recovery of costs.
This article first appeared on WTR Weekly, part of World Trade Mark Review, in January 2022.