We previously reported the first instance decision in an opposition between ABP Technology Limited (“ABP”) and Voyetra Turtle Beach, Inc (“VTB”) relating to the marks STEALTH and STEALTH VR. The proceedings before the Hearing Officer were decided in ABP’s favour with VTB’s application being refused entirely and ABP’s registration surviving the invalidity attack. The decision was based on a finding that ABP was the senior user of the mark.
VTB has since filed an appeal to the Appointed Person claiming two errors made by the Hearing Officer:
Both grounds of appeal were dismissed fairly easily by the Appointed Person. It is the first of these alleged errors which produces the core of the decision and the most interesting points to come out of this case.
The Appointed Person started by confirming that Hearing Officer had correctly set out the test under section 5(4)(a), but had also correctly identified that as both parties had used the mark prior to the date ABP’s registration was filed, an earlier date, namely the date of first actionable use, was relevant to assessment of the passing off claim. The Appointed Person then went on to review this earlier date in some detail.
The Appointed Person confirmed that it was correct for the Hearing Officer to first decide when ABP’s actionable use began, noting that this is not dependent upon the generation of goodwill, and then to assess whether VTB had goodwill as of that date.
In the appeal decision, it is made clear that the question of whether ABP did or did not have any goodwill in the mark as of the date of first actionable use is irrelevant to the assessment of a passing off claim. Rather, the assessment of the passing off claim “must be made by reference to the normal and fair use of ABP’s mark”. On the facts, ABP’s first actionable use of the mark pre-dated the earliest date by which VTB could have generated any goodwill and the Hearing Officer’s finding that ABP was the senior user of the mark was upheld. Whether or not ABP had generated goodwill at the time of its first actionable use was not relevant to determine which party is the senior user.
AA Thornton acted on behalf of ABP in these proceedings.