The cases on trade marks has traversed a long way to the ancient world of the tea when people of Scotland were accustomed to the famous Willow tea rooms and it came to be associated with the services rendered by the owner. In this connection Ms. Mulhern, the owner of the trade mark “Willow Tea Rooms” filed opposition against Willow Tea Rooms Trust.
Ms. Mulhern based her claims on her pre-registered trade marks “Willow” and “Willow Tea Rooms”. She has filed the opposition on the ground of similar and identical trade mark under the Trade Marks Act, 1994 (series of 8 marks). The Trust has argued that the trade marks are not in se and has asked for the proof of actual use of the trade marks. It also argued whether all or any of the stylized forms of the trade marks have been used. And the research established that the trade mark Willow has never been used separately, but, has been used only in conjunction with Tea Rooms.
It is observed as referred in a similar case that when a bundle of trade mark is registered as a single trade mark bearing the same reference number, each one must satisfy the criteria of the Act of 1994 in all aspects. The test to be laid down in this matter is whether the sign differs from the registered trade mark in element so as to alter the distinctive character of the registered trade mark. Thus, it was decided in the similar case that a mere circle around the trade mark does not alter the distinctive character of a trade mark.
The last issue in respect to goodwill and reputation is dealt by the Court in a very interesting way by way of explaining the differences between goodwill and reputation. The Trust could not establish its goodwill under the mark as goodwill is a legal property which is acquired by way of business. Whereas, reputation can exist independent of any business and is a matter of fact for which goodwill is not imperative.