Category: Intellectual Property

James Richard Jackson v Carbury Herne Ltd (Patent): IPO 28 Mar 2000

Mr Jackson was a specialist in diagnostics technology (with a particular interest in dipsticks) whilst Carbury Herne (CHL) were specialists in paper treatment. In 1995-6 they collaborated to produce new dipstick technology involving coating paper with an impermeable polymer with untreated areas allowing liquid to reach diagnostic agents carried by the dipstick.
Plans to form a company to market the dipsticks broke down and in January 1997 application GB9700759.5 was filed in the sole name of CHL. The application was subsequently terminated without being published, but formed the priority basis for a later file PCT application subsequently published as WO98/32018. The PCT application foreshadowed a number of foreign applications plus an EP(UK) application. Despite being warned of the limited options for relief that the termination of the GB application allowed, Mr Jackson limited his claim to actions under sections 8 and 13 and failed to file a promised section 12 action in respect of the PCT action.
After hearing the evidence, joint inventorship was established, but because section 13 only has applicability to published applications or granted patents the only relief available to Mr Jackson was a statement to this effect. As regards the entitlement action under section 8, termination of the UK application (under the policy then existing) and subsequent publication of the PCT application restricted the relief available similarly to a finding of joint entitlement.
An interim decision was issued to allow Mr Jackson to allow Mr Jackson to consider whether he wanted to raise action under section 12 and the parties to consider settlement in the light of the findings.

Citations:

[2000] UKIntelP o18200

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 12 October 2022; Ref: scu.453768

The Old Firm (Trade Mark: Revocation): IPO 3 Mar 2000

IPO The registered proprietor filed a TM8 and counterstatement along with documentation which, it was claimed ‘demonstrated evidence of use’ of the mark. The applicants claimed that the burden of proof (Section 100) had not been discharged and asked that the mark be revoked accordingly. Alternatively, they asked that the proprietor be required to file further and better particulars. The Registry accordingly issued an order for disclosure. In the light of the proprietor’s failure to respond to this order, the Hearing Officer considered that the defence of the application should be struck out, and the registration revoked accordingly.

Judges:

M Knight

Citations:

[2000] UKIntelP o07700, O/077/00

Links:

Bailii

Intellectual Property

Updated: 12 October 2022; Ref: scu.453774

Miscellaneous (Trade Mark: Opposition): IPO 23 Mar 2000

IPO In considering the opposition under Section 39, the Hearing Officer explained that, following examination by the Trade Marks Registry, the description of the mark was clarified to identify the colours show in an accompanying colour photograph as ‘yellow and red’ rather than ‘orange and yellow’. The opponent contended that this affected the identify of the mark, but it was held that although the colours specified in the description had changed, those on the photograph had not, so that after clarification the mark was the same as that for which registration was originally sought. Opposition under Section 39 was therefore dismissed.
In other respects, the decision is identical with SRIS O/113/00, except that the Hearing Officer also found that the applicant’s claim to honest concurrent use was not substantiated by the evidence.

Judges:

M Foley

Citations:

[2000] UKIntelP o11400, O/114/00

Links:

Bailii

Intellectual Property

Updated: 12 October 2022; Ref: scu.453772

Multiload Technology Limited (Patent): IPO 6 Mar 2000

IPO The applicant for restoration relied on an entry in his diary to remind him to instruct his agent to pay the renewal fee at the end of the six months grace period. He made an error in entering the diary reminder with the consequence that instructions were given too late. The system in place was a reasonable one but restoration was refused because the system failed for a reason that was within the applicants control. The standard of reasonable care required by s.28(3) should be applied in a consistent and uniform manner; no allowance can be made for the directing minds lack of experience in renewing patents.

Citations:

[2000] UKIntelP o08600, O/086/00, GB2262350

Links:

Bailii

Intellectual Property

Updated: 12 October 2022; Ref: scu.453773

Renervex (Trade Mark: Opposition): IPO 16 Feb 2000

The opposition was based on the opponents’ earlier mark PRESERVEX, in Class 5. The Hearing Officer concluded that the marks were not sufficiently similar as to give rise to a likelihood of confusion. The possibility that the marks might be poorly reproduced, in use, could not form part of the Hearing Officer’s considerations, he found. The evidence of use did not support the case under passing off.

Citations:

[2000] UKIntelP o04700

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 12 October 2022; Ref: scu.453749

Euroguard (Trade Mark: Opposition): IPO 25 Feb 2000

cw Inter Partes Decisions – Trade Marks – Opposition

Judges:

Mr M Foley

Citations:

OPP 44120, 2015812, [2000] UKIntelP o07100

Links:

PO, IPO, Bailii

Citing:

See Also – Euroguard (Trade Mark: Opposition) IPO 26-Mar-1999
cw Inter Partes Decisions – Trade Marks – Opposition . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 October 2022; Ref: scu.453729

Abercrombie Fitch (Trade Mark: Opposition): IPO 14 Feb 2000

IPO The Section 3(3)(b) and 3(6) grounds were dismissed by the Hearing Officer, as no evidence in support of them was put forward. Reviewing the law and practice in relation to surnames the Hearing Officer concluded that the marks applied for were not barred by the provisions of Sections 3(1)(a) and 3(1)(b). Under Section 5(2)(b) the Hearing Officer concluded that the marks were so dissimilar as to rule out the possibility of confusion on the public. In the light of this finding the Hearing Officer went on to conclude that use of the marks would not result in any misrepresentation and hence the opposition under Section 5(4)(a) did not succeed.

Judges:

Mr M Knight

Citations:

[2000] UKIntelP o04000, O/040/00

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

See Also – Abercrombie Fitch (Trade Mark: Opposition) (2) IPO 14-Feb-2000
As this application was proceeding in Part B of the Register the Section 9 ground was irrelevant and was dismissed by the Hearing Officer.
As regards the Section 10 ground the opponents filed evidence from Scottish Telephone Directories to . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 October 2022; Ref: scu.453715

Abercrombie Fitch (Trade Mark: Opposition) (2): IPO 14 Feb 2000

As this application was proceeding in Part B of the Register the Section 9 ground was irrelevant and was dismissed by the Hearing Officer.
As regards the Section 10 ground the opponents filed evidence from Scottish Telephone Directories to show that ABERCROMBIE was a relatively common surname in Scotland in that it appeared 58 times in the Glasgow Telephone Directory. As this figure was higher than that used in the guidelines applied in the case of surname marks, the Hearing Officer found that the opponents were successful in their opposition to the ABERCROMBIE mark.
As the opponents had provided no information about the FITCH element of the combined mark ABERCROMBIE and FITCH the Hearing Officer indicated that if the applicants entered a disclaimer in respect of the ABERCROMBIE element of the mark, these two applications would be allowed to proceed in Part B of the Register and opposition would fail.
As regards the grounds under Sections 11 and 12 of the Act the opponents’ opposition was based on their ownership of registrations in Classes 24 and 25 for the mark CROMBIE and they also provided details of an extensive reputation and use of this mark in relation to the manufacture and sale of high quality woollen clothes.
Under Section 12 the Hearing Officer determined that the applicants goods in Class 25 were identical to the opponents goods in the same Class and there was a similarity of goods and services in relation to the applicants Class 42 application where design services were included. The Hearing Officer then compared the opponents’ CROMBIE mark with the applicants marks. In relation to the ABERCROMBIE mark the Hearing Officer noted that the opponents mark was contained therein and that there was some visual similarity. However, he considered the respective marks to be quite different and did not believe that the public would associate them in any way. It followed that there would be no confusion with the applicants ABERCROMBIE and FITCH mark. Opposition failed on the Section 12 ground.
Under Section 11 the Hearing accepted that the opponents had a reputation in their mark. However, he considered the respective marks to be so dissimilar that there was no likelihood of deception and confusion of the public if the applicants used their mark. Opposition failed on the Section 11 ground.

Judges:

Mr M Knight

Citations:

[2000] UKIntelP o04100, O/041/00

Links:

Bailii

Citing:

See Also – Abercrombie Fitch (Trade Mark: Opposition) IPO 14-Feb-2000
IPO The Section 3(3)(b) and 3(6) grounds were dismissed by the Hearing Officer, as no evidence in support of them was put forward. Reviewing the law and practice in relation to surnames the Hearing Officer . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 October 2022; Ref: scu.453716

David Page (Trade Mark: Opposition): IPO 3 Feb 2000

IPO Opposition.

Judges:

Mr S Thorley QC

Citations:

2117243A, 2117243B, [2000] UKIntelP o10100

Links:

IPO, Bailii

Jurisdiction:

England and Wales

Citing:

See Also – David Page (Trade Mark: Opposition) IPO 4-Jun-1999
cw Inter Partes Decisions – Trade Marks – Opposition . .

Cited by:

See Also – David Page (Trade Mark: Opposition) IPO 20-Sep-2000
cw Inter Partes Decisions – Trade Marks – Opposition . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 October 2022; Ref: scu.453725

Ayumu Taniguchi Juni-Ichi Tanabe v Toyo Kohan Co Ltd (Patent): IPO 27 Jan 2000

As a result of an uncontested application filed under section 13(1) by Ayumu Taniguchi and Juni-ichi Tanabe, it was found that Ayumu Taniguchi and Juni-ichi Tanabe 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:

Mr B Cleary

Citations:

[2000] UKIntelP o01300, GB 9822134.4

Links:

Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 12 October 2022; Ref: scu.453698

Tartan Glory (Trade Mark: Opposition): IPO 11 Jan 2000

Section 3(3)(b) – Opposition successful; application to be refused unless suitably limited. – Registry practice in respect of ‘Scottish Marks’. – The registration applied for was in respect of ‘Scotch Whisky, vodka, gin, spirits’. In view of the mark’s Scottish connotations the opponents sought either:- refusal in respect of ‘spirits’; refusal in respect of ‘whisky and alcoholic beverages containing whisky, unless Scotch Whisky or Scotch Whisky Liqueurs’; or total refusal. The Hearing Officer reviewed the matter in the light of the evidence and current Registry practice and ruled that the application be refused unless suitably amended.

Judges:

Mr M Reynolds

Citations:

OPP 47707, OPP 47707, [2000] UKIntelP o00300

Links:

Bailii

Intellectual Property

Updated: 12 October 2022; Ref: scu.453710