Category: Intellectual Property

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 basis on which the mark was accepted, using the Hearing Officer’s own knowledge and experience. – This was one of two related actions against this registration (see also BL O/173/02). Having examined the prima facie case against the mark the Hearing Officer concluded that it comprised ‘two obvious and highly descriptive elements conjoined and that in its totality the mark may serve in normal usage from a customer’s point of view to designate the kind of goods concerned (greetings cards incorporating compact discs) in a natural way.’
The mark therefore did not meet the requirements of Section 3(1)(c) of the Act and thus failed also under Section 3(1)(b).
The Hearing Officer went on to consider the matter under the proviso to Section 3(1). He concluded, however, that the evidence filed did not show that the mark had acquired a distinctive character either before registration or since. The application for invalidation under Section 47(1) therefore succeeded by virtue of Sections 3(1)(b) and (c) of the Act.
He did not go on to consider the matter under the other grounds cited.

Judges:

Mr J MacGillivray

Citations:

[2002] UKIntelP o17202

Links:

Bailii

Cited by:

See Also – 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 October 2022; Ref: scu.455054

Discovery PC (Trade Mark: Opposition): IPO 12 Mar 2002

The opposition was based on the opponents use and registrations of their ‘DISCOVERY’ marks, eg THE DISCOVERY CHANNEL, DISCOVERY CHANNEL MUSIC etc. Under Section 5(2)(b) the Hearing Officer focussed on the opponents’ mark DISCOVERY CHANNEL (a CTM mark) registered in respect of identical goods, as this gave the opponents their best chance of success. The Hearing Officer considered that there existed a likelihood of confusion and the opposition under 5(2)(b) succeeded accordingly.
He made no formal finding under any of the other grounds.

Judges:

Mr M Foley

Citations:

2150205, [2002] UKIntelP o10702

Links:

IPO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 October 2022; Ref: scu.455021

Pc Clear (Trade Mark: Opposition): IPO 12 Mar 2002

The opposition was based on four registrations of a device mark which, the opponents claimed, consisted of the letters PC in stylised form. The opposition under Section 5(1) and (5(2)(a) failed automatically as the marks were not identical.
Under Section 5(2)(b) the Hearing Officer thought that it was ‘far from certain that consumers would identify the letters ‘PC’ in the mark’. Neither did he accept that the public would automatically see the word (clear) as a descriptor and not as part of the mark. With all the factors considered he did not conclude that there existed a likelihood of confusion.

Citations:

[2002] UKIntelP o11102

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 October 2022; Ref: scu.455036

Pipeline (Trade Mark: Opposition): IPO 12 Mar 2002

The opponents opposition was based on their claim that the mark applied for is one of the generic expressions used in relation to cleaning preparations, sterilising and disinfectants for use in the cleaning of beerlines, pipelines, pipewashes or pipes and lines. Both sides filed evidence to support their different points of view and the applicants also pointed to the fact that they had used their mark for a number of years prior to application and the mark had become distinctive as an indication of origin of their products.
Under Section 3(6) the Hearing Officer decided that the opponents had filed insufficient evidence to support their claim that the applicants knew the mark applied for was a generic term and therefore that the application had been made in bad faith.
Under Section 3(1)(b) the Hearing Officer noted the applicants claim that their cleaners were not solely for the cleaning of ‘beerlines’ but could also be used on any piping used to convey products from storage to the bar and this could involve ciders, soft drinks and wines. The term ‘beerline’ would not be used in relation to such piping and clearly ‘pipeline’ was one obvious generic term. The Hearing Officer decided from the evidence before him that the term ‘Pipeline’ was an indication of function rather than an indication of source.
In relation to the acquired distinctiveness claimed by the applicant, the Hearing Officer noted that sales totalled only some pounds 400,000 per annum and that only some pounds 27,000 per annum was spent on advertising. He considered that mere use was totally insufficient to prove that the mark applied for had acquired distinctiveness as an indication of origin and therefore the opposition under Section 3(1)(b) succeeded.

Citations:

[2002] UKIntelP o11002

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 October 2022; Ref: scu.455037

ISP (Trade Mark: Opposition): IPO 12 Mar 2002

The term ISP stands for Internet Service Provider. The Hearing Officer found against the applicants under Sections 3(1)(b) and 3(1)(c), but he allowed it to proceed for an amended specification. He found no objection under Section 3(1)(a), 3(1)(d) or 3(3)(b).

Judges:

Mr M Foley

Citations:

2162786, [2002] UKIntelP o11302

Links:

IPO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 October 2022; Ref: scu.455029

Pavneet S Mumick v Kimberly-Clark Worldwide, Inc (Patent): IPO 5 Mar 2002

IPO As a result of an uncontested application filed under section 13(1) by Pavneet S Mumick, it was found that Pavneet S Mumick 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:

[2002] UKIntelP o10202, GB 0117044.8

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.455035

Device Only Mark (Trade Mark: Invalidity): IPO 12 Mar 2002

The applicants application for invalidity was made on a number of grounds under Sections 3 and 5 and both parties filed evidence in the proceedings, and they also referred to other disputes between the parties. In the event the application only proceeded in respect of Section 3(1)(b) on the basis that the registered mark was without distinctive character, so much of the evidence filed was irrelevant.
The applicants principal submission was that the mark at issue was designed to allude to a Friesian cow and not therefore distinctive in relation to milk, in which the registered proprietor traded, from such animals. The Hearing Officer had little difficulty in deciding that the registered mark was sufficiently stylised to act as an indication of origin and thus the application for invalidity failed.

Citations:

[2002] UKIntelP o11202

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 October 2022; Ref: scu.455019

The Thrombosis Research Institute and Trigen Limited v West Pharmaceutical Services Drug Delivery and Clinical Research Centre Limited (Formerly Danbiosyst) Or, In The Case of The Usa, Peter Watts (Patent): IPO 6 Feb 2002

PO Patents – Inter Partes Decisions
IPO Patents – Inter Partes Decisions – The claimant requested that the comptroller decline to deal with a reference under section 12(2) on the grounds of the complexity of the issues. The defendant consented to the request, but on the grounds that there were substantially identical grounds before the High Court.
The request was refused on claimants grounds, but granted on the defendants grounds.

Judges:

Mr D J Barford

Citations:

O/058/02, [2002] UKIntelP o05802, PCT/GB98/03511

Links:

PO, PO, Bailii

Statutes:

Patents Act 1977 12

Intellectual Property

Updated: 15 October 2022; Ref: scu.455004

Radiuscrown Limited v Ash Lacey Building Products Limited (Patent): IPO 7 Feb 2002

Application for revocation of patent – Patents – Inter Partes Decisions

Judges:

Mr P Hayward

Citations:

O/060/02, GB2240559, [2002] UKIntelP o06002

Links:

PO, PO, Bailii

Statutes:

Patents Act 1977 72

Jurisdiction:

England and Wales

Cited by:

See Also – 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, . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 October 2022; Ref: scu.454996

Fibreguide Limited v Deutsche Institute Fur Textil-Und Faserforschung Stuttgart: IPO 28 Feb 2002

Patent – The application under section 71(1) had been stayed to await the outcome of court proceedings on validity and infringement. Following a finding that the patent was invalid and not infringed and dismissal of an appeal by consent, the patent fell to be revoked. Only the issue of costs then remained outstanding in the section 71(1) proceedings, and the parties were directed to bear their own cost

Citations:

O/094/02, [2002] UKIntelP o09402

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.454984

David Broughton v Baylis Generators Limited (Patent): IPO 11 Feb 2002

IPO As a result of an uncontested application filed under section 13(1) by David Broughton, it was found that he should be mentioned as a joint inventors in the granted patent and directed that an addendum slip mentioning them as a joint inventors be prepared for the granted patent.

Judges:

Mrs S Williams

Citations:

O/061/02, [2002] UKIntelP o06102

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 October 2022; Ref: scu.454976