• IN THE UK OFFICE

    Rout of The Flying Scotsman

    For over 100 years, The Flying Scotsman express train service ran at speeds of up to 100mph between London and Edinburgh. During the period 1925 to 1963, the express was pulled by a powerful Pacific type, steam locomotive, which itself was named Flying Scotsman.

    With the demise of the age of steam locomotion, British Railways Board decided (in 1963) to maintain the name of The Flying Scotsman service but to scrap the Flying Scotsman train. The train was saved from extinction, however, by a railway enthusiast called Alan Pegler who maintained it and ran it on excursions across much of the United Kingdom. Subsequently, Mr Pegler sold his interests in the Flying Scotsman train. By March 1996, these interests were owned by a company called Flying Scotsman Railways Limited (FSR). Amongst the interests purchased by FSR was a UK trade mark application (no. 2057869) dated February 1996 for Flying Scotsman (shown on a train nameplate) covering goods and services in Classes 9, 16, 18, 21, 25, 28 and 35. This application was opposed by The Director of Passenger Rail Franchising (DRF), the present owner of the trade mark rights formerly owned by the British Railways Board, and Great North Eastern Railway (GNER), the present operator of The Flying Scotsman service. DRF’s registered trade mark rights were for The Flying Scotsman in relation to "transportation services", The Flying Scotsman plus a Thistle Device in relation to "transportation and catering services" and Flying Scotsman for "alcoholic beverages". The opposition was based primarily on

    • Similarity of marks and goods and/or services (Section 5(2)(b)).

    • Dilution of DRF’s or GNER’s reputation in their Flying Scotsman trade marks (Section 5(3)).

    • Bad faith (Section 3(6)).

     

    The opponent’s evidence confirmed that the phrase The Flying Scotsman had been associated with the London to Edinburgh train service continuously since 1862 and that the locomotive was named after that service in 1925. From 1994 onwards, the phrase had also been used in conjunction with the provision of food and drink on the service between England’s and Scotland’s capital cities. In addition, the opponent’s evidence showed their use of The Flying Scotsman plus Thistle Device for a short period in 1995/96 in relation to whisky tumblers, t-shirts and badges. Finally, the opponents referred to correspondence between the two parties that took place in 1994. In the opponents’ view, this correspondence made it clear to FSR’s predecessor that they had no right to use Flying Scotsman as a business name. However, in a letter written by the British Railways Board in this exchange, it was stated that the name of the locomotive should not be confused with the train service and that the Board’s rights did not extend to the named locomotive itself but only to the use of The Flying Scotsman in connection with passenger transportation and catering services.

    By contrast, FSR’s evidence consisted of videos, books, prints, paintings and similar showing that, since 1925 at least, the phrase Flying Scotsman was primarily associated with the locomotive that was now owned by FSR. They also pointed to two existing UK trade mark registrations for Flying Scotsman for goods in Classes 1 and 30 that were not owned by DRF (or FSR). Finally, they noted that in 1996 they purchased not only the locomotive itself but also business names including Flying Scotsman.

    Dealing first with the Section 5(2)(b) ground of opposition, the Hearing Officer, not surprisingly, found that FSR’s and the opponents’ marks were very similar. However, he was not persuaded that there was any similarity between the respective goods and/or services. He accepted that some of FSR’s goods and services, for example tablemats, glassware and china, could be used in the provision of the opponents’ services. However, in the Hearing Officer’s view, this would be no more than an adjunct to the provision of the service and not use of a trade mark denoting a badge of origin. Further, even though the opponents had a substantial reputation in the term The Flying Scotsman in connection with the train service, this would not lead the public to associate the goods and services of FSR with those (train) services provided by GNER. This view was reinforced by the existence of the Class 1 and Class 30 registrations for Flying Scotsman owned by third parties. On this basis, the opposition under Section 5(2)(b) failed.

    Turning to the dilution objection (Section 5(3)), the Hearing Officer found that, since in 1963 the British Railways Board sold the locomotive to Mr Pegler indicating, at that time, that their (the Board’s) rights in the term Flying Scotsman related to rail and catering services, there was no apparent reason why FSR should not use that term in connection with the locomotive. It followed that FSR’s actions in registering their mark for a range of goods and services that were dissimilar to those of the opponent could not be viewed as parasitic. If FSR owned a registration for their mark, it would be no more likely to affect the distinctiveness of the opponents’ registered marks than the already existing Class 1 and 30 registrations. Since the opponents had not shown either that FSR were acting "without due cause" or that their use of their mark would take advantage of or be detrimental to the distinctive character or repute of the opponent’s mark, the Section 5(3) objection also failed.

    Finally, in relation to the question of bad faith, the Hearing Officer found that FSR’s actions did not fall short of the standards of acceptable commercial behaviour expected by reasonable and experienced businessmen. The correspondence between the parties in 1994 was not clear-cut enough to put FSR on notice that they had no right to use the term Flying Scotsman as a trade mark and business name. It followed that the Section 3(6) ground of opposition also failed and with it the opposition as a whole.

     

    Comment

    This case should be contrasted with the decision involving the trade mark Loaded discussed above. The failure of the opponents in this action is explained principally by the lack of a clear connection between their transportation and catering services and the applicant’s claimed goods and services. It should be noted however that prior to FSR’s filing date, the opponents had used The Flying Scotsman, albeit with a device, in connection with certain merchandise including a whisky tumbler and a T-shirt. Both of these products were covered by FSR’s application. It would therefore appear that the detriment by inhibition argument run in the Loaded case should also have had some impact on the result in this case.

    Once again, however, the clear lesson to be learned from The Flying Scotsman decision is that, if you own a famous trade mark, protect it by registration for a wide range of merchandise. By neglecting to do this, the opponents in the above case have undoubtedly missed a lucrative commercial opportunity.