Category: Intellectual Property

Baker Hughes Inc v Richard Van Buskirk and Darrin L Willauer (Patent): IPO 17 May 2002

As a result of an uncontested application filed under section 13(3) by Baker Hughes Inc, it was found that Richard van Buskirk should not have been mentioned as an inventor. It was directed that an addendum slip be prepared for the published patent application stating that Richard van Buskirk should not have been named as an inventor.

Judges:

Mrs S Williams

Citations:

O/209/02, O/209/02, [2002] UKIntelP o20902

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 October 2022; Ref: scu.455103

Radiuscrown Limited v Ash Lacey Building Products Limited (Patent): IPO 4 Apr 2002

IPO Costs, Revocation, Withdrawal – The previous Preliminary Decision admitted an amended statement, and awarded some costs to the defendant but stayed payment. It gave the defendant the choice of how to proceed, and the defendants decided not to contest the application for revocation. The present decision accordingly revoked the patent. Further costs were awarded, but this time to the claimant. As they exactly offset the original order, the final order for costs was that both sides should bear their own costs.

Judges:

Mr P Hayward

Citations:

O/144/02, [2002] UKIntelP o14402, GB2240559

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Radiuscrown Limited v Ash Lacey Building Products Limited (Patent) IPO 7-Feb-2002
Application for revocation of patent – Patents – Inter Partes Decisions . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 October 2022; Ref: scu.455091

Vintage Hallmark of St Jamess’s (Trade Mark: Opposition): IPO 9 Apr 2002

Section 3(6) – Opposition succeeded
Section 5(2)(b) – Opposition succeeded against the applicants Class 33 application.
Proprietorship: There must be a proprietor in existence at the date of application.
The opponents owned registrations for the marks HALLMARK and ISLAY HALLMARK in Class 33 in respect of the same and similar goods to those included within the applicants Class 33 application. They also claimed that they could find no trace of the applicant company Vintage Hallmark. Thus as the applicants did not appear to have any legal status the opponents claimed that the application had been filed in bad faith (Section 3(6)) of the Act.
The applicants responded to the allegation of bad faith by stating that the application had mistakenly been filed in a trading name and that it should have been filed in the name of Vintage Hallmark of St James Plc. They stated that there had been no change of ownership and filed a Form TM 21 requesting the Registrar to alter the application and other appropriate records.
The Hearing Officer noted from the copy documentation provided by the opponents that Vintage Hallmark of St James Plc had been incorporated on 1 September 2000 which was well after the application date of 24 February 2000. In relation to the Section 3(6) ground the Hearing Officer concluded that as the PLC company had not been incorporated until 1 September 2000 there could not have been a trading name for a company which did not exist at the time of filing of the application. If there was no applicant then there could be no intention to use at the date of application as required by Section 32(3). The opposition thus succeeded under Section 3(6) in respect of the whole of the application.
In relation to the Section 5(2)(b) ground the Hearing Officer noted that identical and similar goods were at issue and went on to compare the respective marks HALLMARK and ISLAY HALLMARK with VINTAGE HALLMARK OF ST JAMES’S. In making the comparison the Hearing Officer accepted that the terms ISLAY and ST JAMES’S were merely geographical indicators and that VINTAGE is a very descriptive and non-distinctive word in relation to whisky products and the like. Thus the distinctive and dominant element in each mark was the word HALLMARK and the Hearing Officer concluded that the respective trade marks were so similar that confusion was likely. Opposition thus succeeded on this ground against the applicants Class 33 application.

Judges:

Mr M Reynolds

Citations:

[2002] UKIntelP o15602

Links:

Bailii

Statutes:

Trade Marks Act 1994 5(2)(b) 3(6)

Intellectual Property

Updated: 15 October 2022; Ref: scu.455098

CD Card (Trade Mark: Invalidity) O17302: IPO 19 Apr 2002

Application for invalidation Section 47(1) successful. Application for revocation, no formal finding. Whilst Section 72 places the onus on the applicants for invalidation, the Registrar’s tribunal may nevertheless proceed by way of a re-hearing on the basis on which the mark was accepted, using (the Hearing Officer’s) own knowledge and experience. This was one of two related actions against the registration (see also BL O/173/02). Under Sections 3(1)(b) and 3(1)(c) the Hearing Officer reached the same findings as in BL O/172/02, q.v. He made no formal findings under any of the other grounds cited.

Judges:

Mr J MacGillivray

Citations:

[2002] UKIntelP o17302

Links:

Bailii

Citing:

See Also – CD Card (Trade Mark: Invalidity) O17202 IPO 19-Apr-2002
SIC Application for invalidation Section 47(1) successful – Whilst Section 72 places the onus on the applicants for invalidation, the Registrar’s tribunal may nevertheless proceed by way of a re-hearing of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 October 2022; Ref: scu.455055