IPO concludes law firm applied for trade mark to block rival firm from using it

Harper Macleod LLP applied for registration of the trade mark “Harpers” in classes 35, 36, 41, and 45 in September 2021. Ross Harper Ltd, the opponent to the application, contended that there was a likelihood of confusion between its services and the applicants’, and that the application had been made in bad faith.

The application was considered by Hearing Officer James Hopkins. The opponent was represented by Philip Hannay of Cloch Solicitors. Jamie Watt appeared on behalf of the applicant.

Drive away a competitor

For the purposes of its claims under section 5 of the Trade Marks Act 1994, the opponent relied upon its UK trade mark “Ross Harper”, which was registered in October 2012 for services in 3 of the 4 classes in which the applicant sought registration, including legal, real estate, and financial services. It claimed that it had a reputation in respect of its services which the applicant would take unfair advantage of were its mark to be registered.

In evidence, a director of the opponent, Nigel Scullion, explained that Ross Harper was formed in 1961 and traded under the name “Ross Harper & Murphy” until 2001, when it was simplified to its current form. The firm ceased trading in 2012, however a new company incorporated by Mr Scullion in 2011 acquired its assets and integrated them into its business under licence. He planned to demerge parts of the licence and operate the legal aid part of the licence through another new company formed in 2016, AMNS, which was renamed Harpers Law Ltd in 2021.

According to the opponent, the applicant was aware that the opponent and its licensee had incorporated and registered its “Harpers Law” legal practice; therefore, it is alleged that the application was made to block the opponent or its licensee from registering the mark or to unfairly drive away a competitor. On this basis, the opponent submits that the application was made in bad faith.

In its counter-statement denying the grounds of opposition, the applicant submitted that the parties’ marks were not confusingly similar. Moreover, its use of the mark significantly pre-dated the opponent’s use of its mark, such that there was no passing off. Evidence was also presented in support of the public generally referring to the applicant as “Harpers”.

Blocking tactic

In his decision, Mr Hopkins said of the strength of the opponent’s evidence of use: “Based upon the evidence that has been filed, I am unable to assess the scale and extent of use of the opponent’s mark during the relevant period (if there was any), or how geographically widespread any such use has been. Likewise, there is nothing before me from which I can ascertain whether such use is warranted in the economic sectors concerned to create or maintain a share in the market for the services protected by the opponent’s mark.”

He continued: “It is my view that the evidence provided is insufficiently solid or specific to meet the requisite standard of proof. Following a careful consideration of the evidence in its entirety, I am not satisfied that the opponent has demonstrated genuine use of its mark in the UK for any of services for which it is registered.”

On the issue of bad faith, Mr Hopkins noted: “The opponent’s pleaded case goes further than mere knowledge and/or mere lack of intention to use; it alleges that the applicant became aware of the opponent’s preparations with respect to a ‘Harpers Law’ legal practice, then proceeded to apply for its mark to act as a blocker to the opponent’s activities with no intention to use the mark itself. Whilst the evidence presented in support of its case is somewhat limited, I find that the opponent has raised a rebuttable presumption of a lack of good faith.”

He added: “A third party may abbreviate a business’ name for ease or brevity, but that does not imbue that business with an automatic right to register that abbreviated name, particularly where it has not actually traded under it as such for many years, has provided no evidence that it intends to do so in future, and had knowledge that a third party was preparing to trade under that name.”

Mr Hopkins concluded: “It makes no difference that the applicant believed it had the legal right to prevent such use based on its rights under ‘Harper Macleod’ and/or a residual goodwill under ‘Harpers’. In those circumstances, the applicant should have based its case on those claimed rights, not registered the mark the opponent proposed to use as a blocking tactic.”

Having concluded that the opponent had been successful, Mr Hopkins awarded it £2,400 towards the costs of contesting the application.