Category: Intellectual Property

Omega (Trade Mark: Revocation) (O-177-04): IPO 21 Jun 2004

IPO Revocation. 1. Partial surrender of registration; effective date.
2. Rule 68(7) : failure to file TM8 rectified as a correction of an irregularity in or before the Office.
At the outset of revocation proceedings against these three registrations the registered proprietor, in place of filing TM8s, had filed forms TM23 partially surrendering the scope of the registrations. The applicant for revocation had indicated that these partial surrenders would close the matter for them, subject to their being effective as from the date of the commencement of proceedings.
The Registry, however, had indicated that the partial surrender could be effective only from the date on which the request had been received; there was no provision for the back-dating of such action. This, after various passages of time, result in a hearing at which it was necessary to consider the status of the Forms 23 requesting partial surrender, the effective date of such surrenders and the consequent effect on the future of the revocation actions.
After reviewing the sequence of events and the relevant provisions in the Act and the Rules, the Hearing Officer concluded that the Registry had been in error in not proceeding with the publication of the (valid) partial surrenders, the effective date being the publication of the surrenders.
As to the further conduct of the proceedings the Hearing Officer ruled that whilst the period for filing a counterstatement (a period which could not be extended) had expired, this had been the result of an error in procedure and could be rectified by the Registrar under Rule 68(7). The Hearing Officer therefore set a new date for the filing of a TM8 and evidence of use or evidence in support of reasons for non-use.
Both sides asked for an award of costs. The Hearing Officer declined to make such an award in favour of either party but she stated that in view of the Registry’s poor handling of the matter the parties were at liberty to make written representations to the Registrar concerning ex gratia payments.

Judges:

Mrs A Corbett

Citations:

1456849, 1456850, 770899, [2004] UKIntelP o17704

Links:

IPO, Bailii

Statutes:

Trade Marks Act 1994

Intellectual Property

Updated: 17 October 2022; Ref: scu.455985

Spaclean Limited v Grunwell (Patent): IPO 24 Jun 2004

IPO Spaclean made a reference to the comptroller that it was entitled to be granted patents for the invention forming the subject of PCT/GB2002/00725. After completion of the evidence rounds, communication from a director of Spaclean who furnished evidence on behalf of the company, ceased. A hearing date was appointed by the Hearing Officer but only action by the Office established that the director would not be able to attend the hearing.
Order given striking out the reference for want of prosecution, with costs awarded to the Defendant as if the hearing had gone ahead.

Judges:

Mr P Hayward

Citations:

[2004] UKIntelP o18204, O/182/04, PCT/GB 2002/00725

Links:

Bailii

Statutes:

Patents Act 1977 12

Intellectual Property

Updated: 17 October 2022; Ref: scu.455992

Degussa-Huls Ag (Patent): IPO 18 Jun 2004

IPO The claims were directed to a hydrophobic, pyrogenically produced silica having a tamped density of 55-200 g/l, hydrophobised by reaction with a halogen-free silane or siloxane and compacted by a roller compactor or belt filter press. In an oral decision, the hearing officer held that the claims lacked inventive step in the light of a prior specification in the applicants name disclosing all these features except that the hydrophobising agent was not halogen-free.

Judges:

Mr R C Kennell

Citations:

O/180/04, GB 0030863.5, [2004] UKIntelP o18004

Links:

Bailii

Statutes:

Patents Act 1977 1(1)(b)

Intellectual Property

Updated: 17 October 2022; Ref: scu.455970

Tecnikon Limited v Holland Heating UK Ltd: IPO 14 Apr 2004

IPO In response to this uncontested reference under sections 8 and 12, Tecnikon Limited was found to be entitled to GB 0207382.3 and to any patent resulting therefrom, and to any international application – or other application falling within the terms of section 12(1) – claiming priority from GB 0207382.3.

Judges:

Mr D J Barford

Citations:

[2004] UKIntelP o09804, O/098/04

Links:

Bailii

Intellectual Property

Updated: 17 October 2022; Ref: scu.455933

CFPH, LLC (Patent): IPO 25 May 2004

IPO The invention relates to a computerised system for trading stocks, shares, currencies and the like. Offers of assets for sale and bids to buy were displayed on each trader’s workstation so that they were able to observe and participate in the market. Each bid or offer made could comprise shown and hidden portions, the purpose of which was to allow a trader to register an interest in trading a particular type of asset without having to show the full extent of how much he was prepared to buy or sell. Thus a trader could enter the market place without distorting it. Whilst not specifically claimed, the system described responded dynamically to the conditions existing in the market place to change the priority given to various participants so that traders already active in a market place were given priority in particular trades to the exclusion of others for a very limited time period after a new offer or bid was made.
In refusing the application, the hearing officer found that the system did increase the rate at which transactions were carried out, but that this was achieved not through the computer system operating more efficiently, but through changing the rules of participation in the market. In substance he found that to be a method for doing business and, as it was implemented in software, a program for a computer making no technical contribution.

Judges:

Mr A Bartlett

Citations:

O/147/04, [2004] UKIntelP o14704, GB0128602.0

Links:

PO, Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 17 October 2022; Ref: scu.455939