Category: Intellectual Property

Ingenico (UK) Ltd v Newt Ltd: IPO 18 Jan 2006

(Patent) The claimant sought to amend its statement by referring to a further prior art document. The defendant raised no objection, subject to an order for costs wasted in respect of the amendment. However in its subsequent counter-statement, the defendant said that the statement was lengthy, repetitive and could not be succinctly answered, and later sought its re-amendment saying the case it had to answer was not clear. At a preliminary hearing, the defendant objected inter alia that the statement did not comply with the Civil Procedure Rules (CPR), whilst the claimant maintained that it was sufficiently clear and that the defendant, having filed a counter-statement, was well aware of the case it had to answer, but should clarify the counterstatement further.
The hearing officer did not consider himself bound by the CPR, and nor did he accept that Tribunal Practice Notice 1/2000 [2000] RPC 587 was intended to tie the comptroller to court procedures. Basing himself instead on the guidance in the Offices ‘Patent Hearings Manual’ (which updated the Notice) he nevertheless found that the statement was defective, principally in not distinguishing the grounds of novelty, inventive step and excluded subject-matter. He gave the parties an opportunity to reach agreement on amendments, but this having failed he ordered the claimant to file a re-amended statement; the defendant would then have an opportunity to amend its counter-statement. The hearing officer awarded costs to the defendant, but thought that any wasted costs in respect of the amendment were insignificant and were balanced by the defendants significant delay in raising its fundamental objections to the statement.

Citations:

[2006] UKIntelP o02206

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 14 October 2022; Ref: scu.454599

Medison (Trade Mark: Opposition): IPO 11 Dec 2001

IPO With regard to their ground of opposition under Section 3(6) the opponents claimed that the applicants had filed their mark being aware of the fact that the opponents had a registration in the UK and that the parties had had disputes in other jurisdictions. The Appointed Person did not see how a filing in these circumstances could be an act of bad faith. An applicant was perfectly entitled to file an application if he believed that he was entitled to a registration even if he was aware of potential objections from another party. Opposition failed on this ground.
The opponents had filed evidence in support of a claim that they had an enhanced reputation in their mark in the UK. However, much of the evidence of use was after the relevant date and the Hearing Officer had decided that the opponents had only an average reputation in their mark at the relevant date. The Appointed Person accepted this finding and went one to review the Hearing Officer’s finding under Section 5(2)(b). He concluded that the Hearing Officer had applied the proper tests when comparing the respective marks M and device MEDISON and MEDICON; that he had taken account of the nature of the goods and the nature of the average customer. Having compared the marks globally the Hearing Officer had decided that there was no realistic likelihood of confusion. The Appointed Person confirmed this view. Opposition on this ground failed.

Citations:

[2001] UKIntelP o57401, O/574/01

Links:

Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454527

Pinchas Goldstein v Diamond and Jewelry-4-U Ltd (Patent): IPO 3 Dec 2001

As a result of an uncontested application filed under section 13(1) by Pinchas Goldstein, it was found that Pinchas Goldstein should be mentioned as a joint inventor in any patent granted for the invention and 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:

[2001] UKIntelP o54101, GB0026391.3

Links:

Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 13 October 2022; Ref: scu.454533

Omega (Trade Mark: Opposition) (O-544-01): IPO 10 Dec 2001

IPO Consent – Opponents estopped from withdrawing Consent – Consent: A very useful review of the matter of consent.
At examination stage the opponents marks had been raised as citations against the applicants application. Subsequently the applicants filed the opponents consent dated 5 May 1997 in respect of a range of goods in Class 9 and in that letter of consent the opponents quoted the numbers of six prior registrations. However, following advertisement of the applicants mark some four years later the opponents filed notice of opposition under Section 5 of the Act; drawing attention to two further registrations in their ownership (Nos 1071474 and 1159199) and seeking further restriction of the applicants specification. In response the applicants said that consent once given could not be withdrawn and asked that the opposition be declared void.
The consent by the opponents had been properly given and no good reasons had been given as to why the opponents wished to withdraw their consent despite the listings of two further registrations since those registrations had been on the Register in May 1997. At the Hearing Licence, Contract, Estoppel and Acquiescence were all discussed as was the effect of consent and the manner in which it was given. Having considered the matter carefully the Hearing Officer decided that the opponents were estopped from entering opposition to this application since they had given proper consent some four years previously; had not taken any action to withdraw consent earlier and this had encouraged the applicants to think that no further objections would come from the opponents. In all the circumstances the Hearing Officer said andquot It appears to me unconscionable that the opposition should proceed and equity will be satisfied if it is dismissed.

Judges:

Dr W J Trott

Citations:

OPP 52468, 2052200, [2001] UKIntelP o55401

Links:

PO, IPO, Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454532

D (Trade Mark: Opposition): IPO 7 Dec 2001

IPO The opponents opposition under Section 12(3) was based on a prior application for the mark DU PONT in Class 25 in respect of the same and similar goods as those of the applicants. The ground under Section 11 was on the basis that the opponents had used their DU PONT mark from 1963 in relation to articles of clothing with turnover in 1993 amounting to andpound;30m and promotion expenditure of some andpound;2m. In use however, the DU PONT mark was used to indicate origin of the materials from which the clothing was made rather than origin of the clothing per se. In the proceedings the Hearing Officer stated that this use did not assist the opponents as the use of the DU PONT mark was at best ancillary and other marks were used to indicate origin of the articles of clothing.
The applicants also filed use of their mark ST DUPONT with turnover of some andpound;86k before the relevant date. Attention was also drawn to the fact that the signature element of the mark in suit was already registered in respect of the goods applied for here.
The Hearing Officer considered the case presented by both parties and accepted that the opponents mark had been used in relation to fibres and fabrics for use in making articles of clothing and such goods were therefore goods of the same description as articles of clothing. Under Section 11 the dispute therefore rested on a comparison of the respective marks DU PONT and ST Dupont (signature) and script letter D. The Hearing Officer considered that the two marks were not similar since the applicants mark required analysis to establish that it was in fact a DUPONT mark and the letter D was also a distinguishing feature. As the marks were not similar the ground under Section 11 failed.
In view of his decision under Section 11 that the respective marks were not similar the Hearing Officer considered that there was no need to consider the matter under Section 12(3).
Additional Points
1. The opponents sought leave to file further evidence to show that they had used the script and normal print versions of their S T DUPONT mark. Leave was allowed.
2. The Judge accepted that only modest use was claimed but was satisfied that this was sufficient for Section 11 purposes.
3. The applicants use did not support a claim for the application of ‘Honest Concurrent Use’ to counter the opponents success under Section 11.

Citations:

[2001] UKIntelP o54801

Links:

Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454505

Covertex (Trade Mark: Invalidity): IPO 6 Dec 2001

IPO Glamorock sought invalidation of Polycell’s registrations whilst Polycell sought rectification, revocation or invalidation of Glamorocks registration. The Hearing Officer dealt first with Glamorock’s application, and noted that whilst the marks were identical, there were differences between the goods (crucial to the outcome of the case). Turning to Polycell’s application, he considered that Glamrock’s specification should be partially revoked. Both parties had succeeded to some extent and had failed to some extent; the Hearing Officer made no award of costs to either party.

Citations:

[2001] UKIntelP o54301

Links:

Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454504

Bytesize (Trade Mark: Opposition): IPO 12 Dec 2001

IPO On a preliminary point, the Hearing Officer decided, not without ‘some misgivings’ to take into account some exhibits which had not been copied to the other side.
In the substantive matter, the opponent claimed to have established a goodwill in the mark BITESIZE. After a careful examination of this claim, however, the Hearing Officer considered any possible damage was limited to a common field of activity, ie some, only, of the services in the Class 41 specifications.
He ordered that the Class 41 specification be reduced accordingly. Since this was only a very limited success, given the breadth of the opponents’ attack, the Hearing Officer made an award of costs to the applicants.

Judges:

Mr D Landau

Citations:

OPP 49953, 2181480, [2001] UKIntelP o55301

Links:

PO, IPO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 13 October 2022; Ref: scu.454502

Deutsches Zentrum Fur Luf-Und Raumfahrt E v V Walter Krenkel and Richard Kochendorfer (Patent): IPO 31 Dec 2001

IPO As a result of an uncontested application filed under sections 13(1) and 13(3) by Deutsches Zentrum fur Luft-und Raumfahrt e V, it was found that Walter Krenkel and Richard Kochendorfer should be mentioned as joint inventors in the granted patent for the invention and that Roland Martin should not have been mentioned as an inventor. It was directed that an addendum slip be prepared for the granted patent mentioning Walter Krenkel and Richard Kochendorfer as joint inventors and stating that Roland martin should not have been named as an inventor.

Citations:

[2001] UKIntelP o00102

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 13 October 2022; Ref: scu.454506

Acrylios (Trade Mark: Opposition): IPO 12 Dec 2001

Sections 5(2)(b) and 5(3)* *An objection under Section 3 was dismissed as it had been based on relative grounds – The opposition was based on the opponents’ marks ACRYSOF and ACRYPAK, registered in Class 10. The Hearing Officer did not find a likelihood of confusion arising from these marks; the Section 5(2)(b) objection failed therefore. Under Section 5(3) the Hearing Officer found that the opponents had not demonstrated the required reputation.

Judges:

Mr M Foley

Citations:

[2001] UKIntelP o55901

Links:

Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454495