IPO Trade Mark: Opposition – Section 3(6): – Opposition successful. – Section 5(2)(b): – Opposition successful – The evidence filed by the two parties established that the applicant and the opponents had previously had a trading arrangement. In the UK the opponents were represented by a Mr Zhou and he had been involved with the applicant, Mr Yu, in marketing the opponents WALKERLAND safety footwear. A company was set up – Walkerland International Ltd- and Mr Zhou was under the impression that he and Mr Yu would each hold a 50% stake in the Company. However, it transpired that Mr Yu had undertaken the work of setting up the company and while Mr Zhu was a director 99% of the shares were held by Mr Yu. That company owned a registration for the mark WALKERLAND in Class 10 in respect of safety footwear.
When Mr Yu had applied to register the mark in suit the registration owned by Walkerland International Ltd had been raised as a citation. That objection was overcome by Mr Yu filing the consent of Walkerland International Ltd.
There had also been difficulty with another firm trading under the mark WALKLANDER. Mr Yu had investigated but had claimed that he could not stop the infringement. It later transpired that one of Mr Yu’s company’s was involved in the use of this similar mark.
Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and he had no difficulty in concluding that the marks WALKERLAND and WALKLANDER were confusingly similar. There was therefore a likelihood of confusion but success under this head depending on the validity of the consent filed by Mr Yu from Walkerland International Ltd. That consent had been signed by Mr Yu and contained the following sentence ‘Until the time of writing Mr Joseph Yu is still the sole director of Walkerland International Ltd (WIL)’. The Hearing Officer noted that Mr Yu had produced no documentation to show that the matter had been discussed within WIL which is a separate legal entity as compared to Mr Yu. As there was no evidence that the letter of consent was furnished with the blessing of WIL the Hearing Officer felt that it was not valid. Opposition thus succeeded on the Section 5(2)(b) ground.
Under Section 3(6) the Hearing Officer noted that the applicant, through his other companies, had been engaged in the marketing of identical goods under a very similar mark (the mark in suit) when he had been carrying on a business with the opponents. Also he had applied for the mark in suit while still a director of WIL which was engaged in that marketing activity. In all the circumstances the Hearing Officer considered that the application in suit had been filed in bad faith and the opposition succeeded on the Section 3(6) ground.
Judges:
Mr D Landau
Citations:
[2002] UKIntelP o32602
Links:
Intellectual Property
Updated: 15 October 2022; Ref: scu.455267