Category: Intellectual Property

Abacus High Quality: IPO 30 Sep 2002

IPO Trade Mark: Invalidity – Sections 47(1) and 3(6): – Application for invalidity failed. – The applicant for invalidation had previously been in partnership with the registered proprietor and a Mr Meredith. The partnership broke up in June 1998 with agreement that Mr Evans and Mr Meredith would keep the VAT registration and sub-contract certificate. However, nothing was agreed about ownership of the mark as used-ABACUS HIGH QUALITY PAINTERS AND DECORATORS – and it would appear that both parties continued to use the mark (or something close to it) after the partnership broke up. Both parties claimed that the other party had left the partnership.
Subsequently the applicant (Mr Niemczyk) formed a limited company with the name ABACUS HIGH QUALITY PAINTERS AND DECORATORS Ltd and Mr Evans and partner formed a company with the name ABACUS DECOR Ltd (because the name above had been registered by Mr Niemczyk). The mark at issue was applied for by Mr Evans on 22 January 2001 and is of course now registered.
In his consideration under Section 3(6) the Hearing Officer determined that the mark as registered was owned by the partnership of three people, namely, Mr Evans, Mr Meredith and Mr Niemczyk and that each had a right to use the mark when the partnership broke up in June 1998. Thus in the Hearing Officer’s view the proprietor Mr Evans had a right to claim ownership when he made his application and that he had not acted in bad faith in making his application. The Hearing Officer observed that Mr Meredith and Mr Niemczyk also owned the mark and they also could register it in their own names if they so wished.
The application for invalidity failed with costs awarded to the registered proprietor.

Judges:

Mr M Foley

Citations:

[2002] UKIntelP o39402

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.455269

Walklander: IPO 8 Aug 2002

IPO Trade Mark: Opposition – Section 3(6): – Opposition successful. – Section 5(2)(b): – Opposition successful – The evidence filed by the two parties established that the applicant and the opponents had previously had a trading arrangement. In the UK the opponents were represented by a Mr Zhou and he had been involved with the applicant, Mr Yu, in marketing the opponents WALKERLAND safety footwear. A company was set up – Walkerland International Ltd- and Mr Zhou was under the impression that he and Mr Yu would each hold a 50% stake in the Company. However, it transpired that Mr Yu had undertaken the work of setting up the company and while Mr Zhu was a director 99% of the shares were held by Mr Yu. That company owned a registration for the mark WALKERLAND in Class 10 in respect of safety footwear.
When Mr Yu had applied to register the mark in suit the registration owned by Walkerland International Ltd had been raised as a citation. That objection was overcome by Mr Yu filing the consent of Walkerland International Ltd.
There had also been difficulty with another firm trading under the mark WALKLANDER. Mr Yu had investigated but had claimed that he could not stop the infringement. It later transpired that one of Mr Yu’s company’s was involved in the use of this similar mark.
Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and he had no difficulty in concluding that the marks WALKERLAND and WALKLANDER were confusingly similar. There was therefore a likelihood of confusion but success under this head depending on the validity of the consent filed by Mr Yu from Walkerland International Ltd. That consent had been signed by Mr Yu and contained the following sentence ‘Until the time of writing Mr Joseph Yu is still the sole director of Walkerland International Ltd (WIL)’. The Hearing Officer noted that Mr Yu had produced no documentation to show that the matter had been discussed within WIL which is a separate legal entity as compared to Mr Yu. As there was no evidence that the letter of consent was furnished with the blessing of WIL the Hearing Officer felt that it was not valid. Opposition thus succeeded on the Section 5(2)(b) ground.
Under Section 3(6) the Hearing Officer noted that the applicant, through his other companies, had been engaged in the marketing of identical goods under a very similar mark (the mark in suit) when he had been carrying on a business with the opponents. Also he had applied for the mark in suit while still a director of WIL which was engaged in that marketing activity. In all the circumstances the Hearing Officer considered that the application in suit had been filed in bad faith and the opposition succeeded on the Section 3(6) ground.

Judges:

Mr D Landau

Citations:

[2002] UKIntelP o32602

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.455267

Dbt Automation Gmbh and Dr Abel (Patent) – O/327/02: IPO 7 Aug 2002

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

Judges:

Mrs S Williams

Citations:

O/327/02, [2002] UKIntelP o32702

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Dbt Automation Gmbh and Dr Dirk Abel (Patent) – O/328/02 IPO 7-Aug-2002
As a result of an uncontested application filed under section 13(1) by DBT Automation GmbH, it was found that Dr Dirk Abel should be mentioned as a joint inventor in any patent granted for the invention and directed that an addendum slip mentioning . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 October 2022; Ref: scu.455224

Dbt Automation Gmbh and Dr Dirk Abel (Patent) – O/328/02: IPO 7 Aug 2002

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

Judges:

Mrs S Williams

Citations:

O/328/02, [2002] UKIntelP o32802

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Cited by:

See Also – Dbt Automation Gmbh and Dr Abel (Patent) – O/327/02 IPO 7-Aug-2002
As a result of an uncontested application filed under section 13(1) by DBT Automation GmbH, it was found that Dr Dirk Abel should be mentioned as a joint inventor in any patent granted for the invention and directed that an addendum slip mentioning . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 October 2022; Ref: scu.455225

Synergie (Trade Mark: Opposition): IPO 31 Jul 2002

IPO The opponent’s opposition was based on a claim that the applicants had not used their mark in the UK up to the present, even though four years has elapsed since the application for registration was filed. They also pointed to the wide specifications claimed and disputed that the applicants’ had an intention to use their mark in relation to all the services listed.
The applicants confirmed their intention to trade in the UK and confirmed that contact had already been made with the Temporary Employment Trade Federation and a number of UK companies. The applicants stated that their mark is currently in use in Spain, Italy, Czech Republic, Slovakia and Canada.
The Hearing Officer noted the applicants current use and their intention to trade in the UK. As there is no requirement to trade before registration is achieved – and even then five years is allowed to put a mark into use before rectification becomes available to an applicant – the Hearing had little difficulty in deciding that the opponents failed in their opposition under Section 3(6).

Judges:

Mr J MacGillivray

Citations:

[2002] UKIntelP o30602

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.455207

Willett v Biotechnology Research Development Corporation (Patent): IPO 31 Jul 2002

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

Judges:

Mrs S Williams

Citations:

[2002] UKIntelP o30802, GB 2356865

Links:

Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 15 October 2022; Ref: scu.455189

Walkerland (Trade Mark: Rectification): IPO 19 Jul 2002

IPO Inter Partes Decisions – Trade Marks – Rectification

Judges:

Mr D Landau

Citations:

REC 11925, 2198572, [2002] UKIntelP o28302

Links:

Bailii

Cited by:

See Also – Walkerland (Trade Mark: Inter Partes) IPO 19-Mar-2004
. .
See Also – Walkerland (Trade Mark: Invalidity) IPO 9-Dec-2004
IPO Trade Marks – Appeals to the appointed person – Application No: 2198572 – Invalidity . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 October 2022; Ref: scu.455210

H Lundbeck A/S (Patent): IPO 10 Jul 2002

IPO The applicants did not offer observations to meet the examiners objection that the product had already been the subject of a certificate. 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:

[2002] UKIntelP o27502, O/275/02, SPC/GB/98/010

Links:

PO, PO, Bailii

Intellectual Property, European

Updated: 15 October 2022; Ref: scu.455187

British Telecommunications Plc v Wyatt, Percival and Kashyap (Patent): IPO 17 Jul 2002

Held that BT were the rightful owners of the US and Canadian applications.
Mr Yashap was ordered to execute the necessary documents (Messrs Wyatt and Percival already having signed); failing that, BT were authorised to sign on his behalf. Costs awarded against Mr Kashyap, but not Messrs Wyatt and Percival.
Cannings’ United States Application [1992] RPC 459 followed.

Judges:

Mr D J Barford

Citations:

[2002] UKIntelP o27802, O/278/02

Links:

Bailii

Statutes:

Patents Act 1977 8 12 39 43

Intellectual Property

Updated: 15 October 2022; Ref: scu.455172