Category: Intellectual Property

Seduction (Trade Mark: Revocation): IPO 27 Nov 1998

IPO Inter Partes Decisions – Trade Marks – Revocation – The Hearing Officer adjourned the hearing in order to give the registered proprietor more time to file evidence in support of his registered mark. Subsequently the registered proprietor filed a Form TM 22 voluntarily cancelling the registration.
The only matter therefore to be decided was the matter of costs. As the registered proprietor had initially defended the registration the applicant had been put to the expense of being represented at the hearing. In the circumstances the Hearing Officer awarded costs to the applicant for revocation.

Judges:

Mr A James

Citations:

REV 8606, O/247/98, [1998] UKIntelP o24798

Links:

PO, Bailii

Intellectual Property

Updated: 11 October 2022; Ref: scu.453327

Wackers (Trade Mark: Opposition): IPO 27 Nov 1998

cw Inter Partes Decisions – Trade Marks – Opposition – The opponents filed evidence to say that they had first commenced to use the mark WACKERS from 1993 and goods (a game known as ‘Pogs’) were sold in the USA through such companies as Walmart during 1994 and 1995. The goods were also exhibited at trade shows from 1993-1995 in Los Angeles, New York and Las Vegas. They also claimed to have been in active negotiations with a marketing company in London and provided samples to that company and a couple of others. The total value of goods provided prior to the relevant date was less than $2000 dollars.
The opponents also filed information from a special investigator who had been requested to investigate the applicants business. A Mrs Dowsett stated that she had contacted a Ms Pearce, a marketing assistant, who told her that Mr Mackay, a director of the applicants, visited many conferences and exhibitions around the world to obtain ideas for children’s toys etc and that he had seen the idea for WACKERS in the USA.
Mr Mackay filed evidence on behalf of the applicants. He stated that he had been employed by Allied Domecq for sixteen years. That company owns the brand name WACKY WAREHOUSE which is used for children’s play areas in public houses. When he formed his own company he worked with the originators of the WACKY WAREHOUSE concept, particularly in the area of developing new toys for such play areas. The name WACKERS was chosen as an apt name for a game consisting of one disc hitting another as it was easily associated with the name WACKY WAREHOUSE. A search had been carried out and the application for registration was filed.
Mr Mackay explained that he had been told about the game ‘Pogs’ by a Mr King, a representative of Big Joe Slammers, an American company.
As regards the investigators report Mr Mackay produced a written contemporaneous record of the conversation between Ms Dowsett and MsPearce and it did not support the allegations made by Ms Dowsett. Additionally he claimed that no-one from his company had visited America prior to 1996 and the name WACKERS was being used in proposals in February and March, 1995.
The Hearing Officer accepted the applicants version of events and concluded that the application had not been filed in bad faith. Opposition thus failed on this ground.
Under Section 5(4)(a) – Passing Off – the Hearing Officer concluded that that ground of opposition must fail because there was no proof that the applicants had any reputation or goodwill in the mark in the UK at the relevant date.

Judges:

Mr G Salthouse

Citations:

OPP 45429, [1998] UKIntelP o24698, O/246/98

Links:

PO, Bailii

Intellectual Property

Updated: 11 October 2022; Ref: scu.453332

Academy (Trade Mark: Revocation): IPO 27 Nov 1998

cw Inter Partes Decisions – Trade Marks – Revocation – Result
Section 46(1) – Application partially successful.
Points Of Interest
1. The applicant for revocation had cast doubt on the authenticity of the invoices and exhibits filed by the registered proprietors. The Hearing Officer concluded that these claims had not been substantiated and he ordered the deletion of paragraph 28 of the applicant’s affidavit.
2. Both parties appealed the Hearing Officer’s decision to the Appointed Person. In his decision dated 4 May 2000 (SRIS O/169/00) the Appointed Person had the benefit of additional evidence of use before him and in the circumstances found that the registered proprietor should retain his specification in full.
Note
See also Appointed Person’s decision dated 10 May 1999 (BL O/135/99) in which he refused an application by the Registered Proprietors to refer the proceedings to the High Court and in which he also refused an application by the applicant for disclosure (discovery).
Summary
The registered proprietor filed evidence which established some modest use during the relevant period and the Hearing Officer concluded that this was sufficient to support a claim to genuine use during the relevant five years period. He, therefore, allowed the registration to remain on the Register with a reduced specification.

Judges:

Mr G Salthouse

Citations:

REV 9214, [1998] UKIntelP o24598, O/245/98

Links:

PO, Bailii

Intellectual Property

Updated: 11 October 2022; Ref: scu.453304