Category: Intellectual Property

Laboratoire De La Mer (Trade Mark: Revocation): IPO 19 Jun 2001

IPO Result – Section 46(1): – Revocation partially successful.
Points Of Interest
1. Genuine Use: Importation of goods bearing a mark into the UK is sufficient to support a claim to genuine use.
2. See also associated decision O/263/01.
3. The applicants for revocation appealed to the High Court. In his decision dated 19 December 2001 Mr Justice Jacob allowed the appeal as against the Class 5 registration. As regards the Class 3 application a reference was made to the European Court of Justice as to what constitutes ‘genuine use’. (See [2002] ETMR 34).
4. Reasoned Order from the ECJ [2004] FSR 38.
5. High Court Decision (Resumed Hearing) [2005] FSR 29. Revocation allowed.
6. Court of Appeal Decision 29 July 2005. Appeal allowed. Order of the Registrar restored.
Summary
The registered proprietors evidence of use was somewhat inconclusive and the scale of use was modest. However, it was accepted that there had been genuine use in respect of some goods and the Hearing Officer decided that the mark should be allowed to remain on the register for a reduced specification of goods.
Section 46(1): – Revocation partially successful.
Points Of Interest
1. Genuine Use: Importation of goods bearing a mark into the UK is sufficient to support a claim to genuine use.
2. See also associated decision O/263/01.
3. The applicants for revocation appealed to the High Court. In his decision dated 19 December 2001 Mr Justice Jacob allowed the appeal as against the Class 5 registration. As regards the Class 3 application a reference was made to the European Court of Justice as to what constitutes ‘genuine use’. (See [2002] ETMR 34).
4. Reasoned Order from the ECJ [2004] FSR 38.
5. High Court Decision (Resumed Hearing) [2005] FSR 29. Revocation allowed.
6. Court of Appeal Decision 29 July 2005. Appeal allowed. Order of the Registrar restored.
Summary
The registered proprietors evidence of use was somewhat inconclusive and the scale of use was modest. However, it was accepted that there had been genuine use in respect of some goods and the Hearing Officer decided that the mark should be allowed to remain on the register for a reduced specification of goods.

Citations:

[2001] UKIntelP o26401

Links:

Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454255

Hia (Trade Mark: Opposition): IPO 19 Jun 2001

Result
Section 5(2)(b): – Opposition failed.
Points Of Interest
Filing of late evidence : The applicants wished to file evidence three days before the hearing about the fact that an ELLE mark (French for SHE) in relation to women’s magazines co-existed with the opponents mark. The Hearing Officer refused to allow in the late evidence and in any event took the view that it would not assist the applicants since there was no information about the circumstances of co-existence.
Summary
The opponents own the mark SHE and have a significant reputation in it in relation to magazines for women. The applicants claimed to have used their mark for a number of years, also in relation to magazines for women, and no confusion had occurred. The dispute rested on a comparison of the respective marks and the Hearing Officer found that there was no likelihood of visual or aural confusion. As regards conceptual confusion this might arise in only very restricted circumstances where arabic speakers would recognise HIA as meaning SHE and thus assume a connection with the opponents. As the opponents had filed no evidence about the likely number of such people in the UK the Hearing Officer decided that they had failed to discharge the onus to show that confusion would arise to any significant extent.

Citations:

[2001] UKIntelP o27001

Links:

Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454253

Grace Training (Trade Mark: Opposition): IPO 19 Jun 2001

IPO The opponents own registrations for the mark GRACE and variations thereof in Classes 1, 2, 7, 11, 16, 17, 19, 29, 31 and 37. They claimed to have used the mark GRACE in respect of training services for their own employees and to have sponsored scientific educational fairs, conferences and other events.
The opponents filed no evidence in relation to the grounds under Sections1(1), 3(1)(a), 3(3)(b) and 3(6) so the Hearing Officer dismissed these grounds with minimal consideration.
Under Section 5(2)(b) the Hearing Officer accepted that the respective marks were very close but as the opponents goods and services were very different from the services of the applicant there was no likelihood of confusion.
Under Sections 5(3) and 5(4) the Hearing Officer noted the lack of real use and reputation in the United Kingdom of the opponents’ mark and concluded that the opponents must also fail on these grounds.
The ground under Section 6(1)(c) related to a claim that a Brazil Tribunal had held GRACE to be a well known mark in Brazil under the terms of the Paris Convention. As the evidence filed did not support such a claim as regards the UK the Hearing Officer also rejected this ground.

Citations:

[2001] UKIntelP o26801

Links:

Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454252

Closer (Trade Mark: Opposition): IPO 19 Jun 2001

IPO The opposition was based on the registrations and use of the opponents’ mark CLOSED. In view of the paucity of the evidence of use, the Hearing Officer confined his considerations of the matter to Section 5(2)(b)* and did not make a finding under Section 5(4)(a), which had been cited in the statement of grounds. Under Section 5(2)(b) the Hearing Officer found a likelihood of confusion and the opposition succeeded accordingly.

Citations:

[2001] UKIntelP o26501

Links:

Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454240

Chan v Jeffcoat (Patent): IPO 20 Jun 2001

IPO The patent concerned a non-woven fabric used primarily for wound dressing. The parties had discussed such a wound dressing in 1993, and in 1994 a company was formed to carry on the business of development and production of wound dressings, with the parties as shareholders. The defendant was managing director and had approached a patent attorney in January 1995. The patent application was filed on 27 June 1995, but the defendant resigned from the company a few days later. The claimant alleged that he had developed the invention during 1994 at the defendants request, whereas the defendant stated that she had developed the invention prior to 1994, had involved the claimant to some extent during further development of the invention, and did not assign any right in the invention to the company formed in that year. On the evidence, the hearing officer decided that the invention was made at least in embryo form by the defendant prior to the setting up of the company. He held that the claimant had failed to discharge the onus on him to prove his case, and had not shown evidence either that his contributions to the further development of the invention were sufficient for him to be considered sole or joint inventor, or that the invention had been assigned to him or to the company. The applications under sections 13(1), 13(3) and 37(1) were therefore refused.

Judges:

Mr G M Bridges

Citations:

[2001] UKIntelP o27101, O/271/01, GB2302669

Links:

Bailii

Statutes:

Patents Act 1977 13(1) 13(3) 37(1)

Intellectual Property

Updated: 13 October 2022; Ref: scu.454235

The Edge (Trade Mark: Opposition): IPO 3 May 2001

Inter Partes Decisions – Trade Marks – Opposition

Judges:

Mr C Bowen

Citations:

OPP 49143, 2138809, [2001] UKIntelP o21701

Links:

PO, IPO, Bailii

Jurisdiction:

England and Wales

Citing:

See Also – ‘the Edge’: Application No 2051099 TMR 1-Jun-2000
cw Appeals to the Appointed Person Decisions – Trade Marks – Opposition . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 13 October 2022; Ref: scu.454219

Pizza Pizza (Trade Mark: Opposition) O/187/01: IPO 19 Apr 2001

IPO Opposition based on opponent’s registration of a TWIN CHEF device mark in Class 30. The opposition related to the same application under consideration in SRIS O/186/01, and the opponent relied on largely the same evidence and argument, but cited a different device mark. However, the Hearing Officer came to the same findings, dismissing opposition under Sections 5(2)(b) and 5(4)(a) for essentially the same reasons.

Judges:

Mr J MacGillivray

Citations:

[2001] UKIntelP o18701, O/187/01

Links:

Bailii

Statutes:

Trade Marks Act 1994 3(1)(b) 3(1)(c) 3(6) 5(2)(b) 5(4)(a) 56

Cited by:

See Also – Pizza Pizza (Trade Mark: Opposition) O/186/01 IPO 19-Apr-2001
IPO Opposition based on opponent’s various registrations (Community and UK) of a TWIN CHEFS device mark in Classes 29, 30 and 32. In regard to opposition under Section 5(2)(b), the Hearing Officer accepted that . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 13 October 2022; Ref: scu.454192

Pizza Pizza (Trade Mark: Opposition) O/186/01: IPO 19 Apr 2001

IPO Opposition based on opponent’s various registrations (Community and UK) of a TWIN CHEFS device mark in Classes 29, 30 and 32. In regard to opposition under Section 5(2)(b), the Hearing Officer accepted that identical goods and services were involved under the respective marks, and that the opponent’s mark had a reasonably high distinctive character, especially among customers in the catering trade. He therefore proceeded to compare the respective marks, but in applying the usual authorities he concluded that there was no likelihood of confusion in a visual context. In his view, while both marks contained devices of two chefs, the respective stylised representations were very different and the differences would survive imperfect recollection.
Finding also no risk of aural confusion, or any conceptual basis for confusion (the use of chef devices being relatively common, and the opponent having failed to establish that the device of two chefs per se was distinctive of its goods and services), he therefore dismissed opposition on that ground.
Opposition under Section 5(4)(a) was also dismissed, briefly, the Hearing Officer finding no greater risk of misrepresentation, given the opponent’s relatively limited goodwill under its mark.

Judges:

Mr J MacGillivray

Citations:

[2001] UKIntelP o18601

Links:

Bailii

Statutes:

Trade Marks Act 1994 3(1)(b) 3(1)(c) 3(6) 5(2)(b) 5(4)(a) 56

Citing:

See Also – Pizza Pizza (Trade Mark: Opposition) O/187/01 IPO 19-Apr-2001
IPO Opposition based on opponent’s registration of a TWIN CHEF device mark in Class 30. The opposition related to the same application under consideration in SRIS O/186/01, and the opponent relied on largely the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 13 October 2022; Ref: scu.454191

Secretary of State for Defence v R C D Young and C R Chatwin (Patent): IPO 10 Apr 2001

Inter Partes Decisions – Patents – This decision gave formal effect to a draft order agreed between the parties following the hearing officers earlier decision in which he found some aspects of the invention belonged to one party and some to the other. The hearing officer allowed the claimant to file a new patent application in respect of part of the matter in the earlier application, having first satisfied himself that the part in question was adequately identified.

Judges:

Mr P Hayward

Citations:

O/174/01, [2001] UKIntelP o17401, GB 2317487

Links:

PO, PO, Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454195

Amit Jain v Asahi (Patent): IPO 10 Apr 2001

IPO As a result of an uncontested application filed under section 13(1) by Amit Jain, it was found that Amit Jain 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 patent application.

Judges:

Mrs S Williams

Citations:

O/173/01, [2001] UKIntelP o17301, GB 9813892.8

Links:

PO, PO, Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 13 October 2022; Ref: scu.454171

Markus Bohm (Patent): IPO 19 Mar 2001

PO Patents – Inter Partes Decisions – Markus Bohm applied under section 13(1) to have Helmut Stiebig mentioned as a joint inventor in respect to granted patent EP (UK) 0788661. As the appropriate parties concerned agreed that Helmut Stiebig should have been mentioned as a joint inventor, it was directed that an addendum slip mentioning him as such should be prepared for the published patent application and the granted patent.

Judges:

Mrs S Williams

Citations:

O/148/01, [2001] UKIntelP o14801

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 13 October 2022; Ref: scu.454160