Category: Intellectual Property

Omega (Trade Mark: Revocation) (O-393-03): IPO 17 Dec 2003

Section 46(1)(b): – Appeal partially allowed. Wider specification retained by registered proprietors.
In his decision dated 30 January 2003 (BL O/028/03) the Hearing Officer allowed partial revocation with the specification being restricted to, essentially, wrist watches. The registered proprietors appealed and sought permission to file additional evidence.
The Appointed Person considered the request to file additional evidence and only allowed evidence relating to the meaning of the French word ‘joaillerie’. The Hearing Officer had decided that it meant ‘jewelers shop’ whereas the registered proprietors argued that it meant ‘jewellery’.
The Appointed Person considered the totality of the evidence before her and decided that the specification should be slightly wider than that allowed by the Hearing Officer and should read ‘watches and jewel-watches and parts and fittings therefore, all being made of precious metals or imitations of precious metals’.
Original costs to applicants confirmed and an additional award in relation to these proceedings.

Judges:

Professor Ruth Annand

Citations:

Rev 80068, O-393-03, 474165, [2003] UKIntelP o39303

Links:

PO, IPO, Bailii

Intellectual Property

Updated: 16 October 2022; Ref: scu.455805

DK Dreamkit: IPO 3 Dec 2003

Trade Mark Opposition – The opponents opposition was based on their ownership of three registrations for the marks DREAMS and one registration for DREAM, in Class 25 in respect of identical goods to those of the applicants. The opponents also claimed use of the mark DREAMS from 1982 onwards and filed evidence in respect of the years 1996 to 2000. While such evidence indicated that use had been significant it was poorly documented and the Hearing Officer was unable to accept that DREAMS had acquired an enhanced reputation through use. The opponents also stated that they had licensed their mark DREAM and royalties of 100,000 pounds had been received. No other details were, however, given.
Under Section 5(2)(b) the Hearing Officer considered that the opponents best case rested on their DREAM registration and he noted that identical goods were involved. Insofar as the applicants mark was concerned he considered the word DREAMKIT to be the prominent element and that the DK logo would encourage consumers to see the word as two elements DREAM and KIT. From papers on file it appeared that the applicants used their mark on items of ladies clothing in the colours of football team kits so the element KIT in the applicants’ mark would be seen as at least semi-descriptive. Also the dictionary definition showed that KIT was a descriptive element in relation to items of clothing. As the opponents’ mark was contained within the word element of the applicants’ mark the Hearing Officer considered the respective marks to be visually, phonetically and conceptually similar. While it was possible to differentiate between the two marks the Hearing Officer believed that consumers would assume that items of clothing sold under the respective marks came from economically linked undertakings. Opposition succeeded on this ground.
In view of his finding under Section 5(2)(b) the Hearing Officer saw no need to consider the Section 5(4)(a) ground. He observed, however, that the opponents were in no better position as compared to the Section 5(2) ground.

Judges:

Mr M Foley

Citations:

2303619, [2003] UKIntelP o37803

Links:

IPO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 16 October 2022; Ref: scu.455790

V Vehicleoptions.Co.Uk (Trade Mark: Invalidity): IPO 21 Nov 2003

The applicant for invalidity stated that they had made substantial use of the mark VEHICLEOPTIONS from December 1998; that Mr Akram had been appointed a franchisee on 29 July 1999 and that termination of the agreement between the parties had been given on 2 February 2000. Thus Mr Akram was a franchisee when he applied to register the mark in suit on 11 February 2000. Therefore, that application had been made in bad faith.
Both parties filed evidence but in his consideration under Section 5(4)(a) – Passing Off – the Hearing Officer observed that the applicant’s evidence of use up until 11 February 2000 was not well focused and he was unable to conclude that they had the necessary reputation and goodwill at that date. Invalidity failed on this ground.
As regards the ground under Section 3(6) the Hearing Officer noted that the agreement between the parties did not mention ownership of marks. However, he accepted that Mr Akram must have been aware that the applicant carried on a business under the trade mark VEHICLEOPTIONS when he was appointed as a franchisee and he was not therefore in a position to claim ownership of the mark in suit when he applied for registration at a later date. Invalidity thus succeeded on this ground.
There was a parallel dispute about the registration and ownership of internet names but the Hearing Officer was only able to deal with the trade mark side of the dispute

Judges:

Mr S P Rowan

Citations:

[2003] UKIntelP o36803, O/368/03

Links:

Bailii

Intellectual Property

Updated: 16 October 2022; Ref: scu.455781

Sumitomo Rubber Industries Limited (Patent): IPO 14 Nov 2003

IPO The Hearing Officer found that the proprietor, represented by the General Manager (the Directing Mind), had effectively taken reasonable care to see that the sixteenth year renewal fee was paid by issuing standing instructions that renewal fees should be paid automatically on any overseas patent which was licenced, even if its Japanese parent patent was abandoned. The fact that the subject patent was licenced meant that the fee should have been paid and so the decision by an employee to abandon the patent by not paying the renewal fee was contrary to the proprietor’s standing instructions. That decision was not something the General Manager could be expected to have foreseen. The Hearing Officer therefore concluded that the proprietor had taken reasonable care to see that the renewal fee was paid and allowed the application for restoration.

Judges:

Mr M C Wright

Citations:

[2003] UKIntelP O35103, GB 2176409

Links:

Bailii

Statutes:

Patents Act 1977 28(3)

Intellectual Property

Updated: 16 October 2022; Ref: scu.455778

Lost In Space (Trade Mark: Revocation): IPO 20 Nov 2003

Mr G Salthouse said: ‘The fact that graphics provided by the proprietor are used in television programmes does not, of itself, mean that the proprietor is a supplier of television programmes’

Judges:

Mr G Salthouse

Citations:

2050918, [2003] UKIntelP o35803

Links:

IPO, Bailii

Jurisdiction:

England and Wales

Cited by:

See Also – Lost In Space (Trade Mark: Revocation) (2) IPO 20-Nov-2003
Application for revocation, Section 46 – Successful – A separate revocation action against the Class 41 and Class 42 portions of the same registration is dealt with in BL O/358/03.
At the hearing the applicants sought to amend the period under . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 16 October 2022; Ref: scu.455765

Lost In Space (Trade Mark: Revocation) (2): IPO 20 Nov 2003

Application for revocation, Section 46 – Successful – A separate revocation action against the Class 41 and Class 42 portions of the same registration is dealt with in BL O/358/03.
At the hearing the applicants sought to amend the period under review to cover a time later than the date of filing of the applications for revocation. This was refused.
The evidence of use filed by the registered proprietor however did not persuade the Hearing Officer that there had been use of the mark in the period stipulated, on any of the goods in Class 9. Neither was there evidence of proper reasons for non-use. The application for revocation succeeded accordingly.

Judges:

Mr G Salthouse

Citations:

2050918, [2003] UKIntelP o35703

Links:

IPO, Bailii

Citing:

See Also – Lost In Space (Trade Mark: Revocation) IPO 20-Nov-2003
Mr G Salthouse said: ‘The fact that graphics provided by the proprietor are used in television programmes does not, of itself, mean that the proprietor is a supplier of television programmes’ . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 16 October 2022; Ref: scu.455764

Aldo’s (Trade Mark: Opposition): IPO 6 Nov 2003

IPO The opponent’s opposition was based on their ownership of registrations of their ALDI mark in a range of Classes including Classes 29, 30 and 35. The applicants accepted that the opponents had a reputation in their mark.
The applicants explained why they had adopted their ALDO’S mark and claimed that it was an Italian Christian name. They claimed that the mark had been put into use, after the date of filing, in relation to microwaveable snack food products and they were not aware of any confusion between the respective marks.
Under Section 5(2)(b) the applicants argued that the opponents in their pleadings, which were somewhat unclear, had restricted their opposition to identical goods only. The opponents disputed this and the Hearing Officer decided that as the opposition was under Section 5(2)(b) similar goods must also be considered. In any event it was a fact that in most instances identical goods were at issue. The Hearing Officer then compared the respective marks ALDI and ALDO’S and decided that while there were some similarities it was likely that they would be pronounced as AL-DEE and AL-DOH’S and concluded that they were not so similar as to lead to confusion. Opposition failed on this ground.
The opponents also failed on the Section 5(4)(a) ground in view of the Hearing Officer’s finding that the respective marks were not similar.

Judges:

Mr Foley

Citations:

OPP 90134, 2281931, [2003] UKIntelP o34203

Links:

PO, IPO, Bailii

Intellectual Property

Updated: 16 October 2022; Ref: scu.455747

Rodney Stock v Pixar (Patent): IPO 1 Oct 2003

IPO As a result of an uncontested application filed under section 13(1) by Rodney Stock, it was found that Rodney Stock should be mentioned as a joint inventor in the patent granted for the invention and directed that an addendum slip mentioning him as a joint inventor be prepared for the published application and for the granted patent for the invention.

Judges:

Mrs S Williams

Citations:

[2003] UKIntelP o29903, O/299/03

Links:

PO, Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 16 October 2022; Ref: scu.455739

Robert Leonard Carpenter (Patent) O/325/03: IPO 27 Oct 2003

The application was entitled Hands-free megaphone and claimed a combination of a microphone assembly, a body pack including an output horn secured by a belt around a users body, and a cable connecting the microphone assembly and the body pack. An objection of lack of inventive step was based on a French patent. It was found that there were several differences between the claimed invention and the disclosure in the cited French patent. Following Windsurfing, it was held that the current application involved an inventive step, and should proceed to grant.

Judges:

Mr Brunt

Citations:

[2003] UKIntelP o32503, GB 0006887.4, O/325/03

Links:

Bailii

Statutes:

Patents Act 1977 1(1)(b) 3

Intellectual Property

Updated: 16 October 2022; Ref: scu.455738

Fujitsu Limited (Patent): IPO 23 Oct 2003

The present application relates to a system for automating the ordering of food in a cafeteria. When customers use terminals to place advance orders for items from the cafeteria menu, the ingredients needed to make up those orders are stored in a file. When a deadline for placing orders is passed, the ingredients needed to make up all those orders are automatically ordered from suppliers. Orders placed after the deadline are refused. Meals are then prepared from the ingredients so that they are ready for the customer at the required time.
Held not to make a technical contribution and to be excluded as a program for a computer, a method for performing a mental act and a method of doing business.

Citations:

[2003] UKIntelP o32403

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 16 October 2022; Ref: scu.455729

Denso Ltd v NGK Spark Plugs Ltd (Patent): IPO 28 Oct 2003

IPO The patent EP0575163 relates to a spark plug. Denso applied for revocation of the patent in that it was not patentable on the grounds of lack of novelty and/or inventive step. NGK offered amendments to meet this, but Denso opposed these on the grounds that the claims still lacked patentability. NGK then filed a further, preferred set of amendments. Denso then renewed and reinforced their opposition, particularly in that the amended claims were obvious, they added matter, and that the Comptrollers discretion to amend should not be exercised due to the conduct of NGK.
NGK also offered a set of fall-back amendments should it be decided that the preferred amendments were not allowable. The fall-back amendments were not opposed by Denso.
The hearing officer held that the claims as given in the preferred amendments were not obvious, that they did not add matter, but that the Comptrollers discretion should not be exercised due to the undue delay in applying to amend. The hearing officer however allowed the fall-back amendments.

Citations:

[2003] UKIntelP o32703

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 16 October 2022; Ref: scu.455717

American Cyanamid Company (Patent): IPO 13 Oct 2003

IPO The applicants did not offer observations to meet the examiner’s objection that the product was not protected by the basic patent. Subsequent warnings that failure to reply would result in rejection and an invitation to be heard also failed to illicit a response. Therefore the application for an SPC was rejected.

Judges:

Mr R Walker

Citations:

[2003] UKIntelP o30403, O/304/03

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 16 October 2022; Ref: scu.455713

Serge Jean-Marie Rebeillard and Cecile Denise Kreweras (Patent): IPO 10 Sep 2003

IPO Mrs Kreweras, who took over responsibility for renewals when her husband fell ill, received reminders from her patent attorney informing her that the last day for paying the renewal fee with extension fees was 2 June 2002. However, she says she did not notice that the date was different from the date quoted in the reminders for paying renewal fees on corresponding patents in other countries, which was 30 June 2002. Consequently, when she issued instructions later in June 2002 to pay the fee it was too late. The Hearing Officer found that the reminders were unequivocal and contained a clear indication of their importance. He appreciated that Mrs Kreweras was under some pressure at the time. However, in the absence of any explanation for her failure to notice the date, he was not satisfied that that pressure was such as to impair her ability to act in a reasonable manner such as to excuse her failure to issue payment instruction in time. He therefore refused to allow restoration.

Citations:

[2003] UKIntelP o27603

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 16 October 2022; Ref: scu.455707

Sheel Khemka v Nana-Akoto Osei (Patent): IPO 19 Sep 2003

Burden of proof, Entitlement, Inventorship, Jurisdiction, Orders – One of the co-applicants for the PCT application (Mr Khemka) referred questions of inventorship and entitlement on forty applications derived from the PCT application. There was no domestic GB application. The hearing officer found that he did not have jurisdiction under sections 8 and 37 (section 9 did not therefore apply); did have jurisdiction under section 10; had no jurisdiction under section 12 over patents which had been granted at the time the reference was filed; and only had jurisdiction under section 13 in respect of the EP(UK) . On the evidence, he declined to issue a certificate under section 13, finding that neither co-applicant had discharged their onus to show that they were sole inventor. He also found that both were entitled to be co-owners, but ordered under section 12 that Mr Khemka should be sole owner of the EP(UK) patent and Dr Osei have a licence. He invited submissions on the form of the order. He declined to make a ruling under sections 10 and 12 for those applications other than the EP(UK) absent submission as to the status of the applications and the law of the respective countries.

Judges:

Mr P Hayward

Citations:

[2003] UKIntelP o28403, O/284/03

Links:

Bailii

Statutes:

Patents Act 1977 8 9 10 12 13 37 82

Intellectual Property

Updated: 16 October 2022; Ref: scu.455708

Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-245-03): IPO 20 Aug 2003

IPO Trade Marks – Ex Parte Decisions

Judges:

Mr I Peggie

Citations:

715825, [2003] UKIntelP o24503, O-245-03

Links:

IPO, Bailii

Statutes:

Trade Marks Act 1994

Citing:

See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03) IPO 20-Aug-2003
IPO Ex Parte. . .
See Also – Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-252-03) IPO 20-Aug-2003
IPO Ex Parte. . .
See Also – Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-250-03) IPO 20-Aug-2003
IPO Ex Parte. . .
See Also – Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-248-03) IPO 20-Aug-2003
IPO Ex Parte. . .
See Also – Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-246-03) IPO 20-Aug-2003
IPO Ex Parte. . .

Cited by:

See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-255-03) IPO 20-Aug-2003
IPO Ex Parte. . .
See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-253-03) IPO 20-Aug-2003
IPO Ex Parte. . .
See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-251-03) IPO 20-Aug-2003
IPO Ex Parte. . .
See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-249-03) IPO 20-Aug-2003
IPO Ex Parte. . .
See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-247-03) IPO 20-Aug-2003
IPO Ex Parte. . .
See Also – Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-244-03) IPO 20-Aug-2003
IPO Ex Parte. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 16 October 2022; Ref: scu.455682