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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> SYMONDS DEVICE (Trade Mark: Invalidity) [1998] UKIntelP o10498 (17 April 1998) URL: http://www.bailii.org/uk/cases/UKIntelP/1998/o10498.html Cite as: [1998] UKIntelP o10498 |
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For the whole decision click here: o10498
Result
Sections 47(1) & 3(6) - Invalidity action successful.
Section 47(2)(b) & 5(4)(a) - Invalidity action successful.
Points Of Interest
Summary
The firm of Symonds Trolley Services (UK) Ltd (STS UK) carried on the business of the repair and refurbishment of supermarket and airport trolleys. It was controlled by Mr Donald E Symonds and his two sons. In 1993 the company went into voluntary liquidation and a new company Symonds Trolley Services Ltd (STS) was formed with Mr Donald E Symonds as a director and consultant and his two sons owning 49% of the shares. The new company acquired many of the assets of the old company and continued to carry on the existing business. The new company did not acquire any intellectual property rights from the liquidator of the old company.
While he was still a director and consultant with STS Mr Symonds applied to register the mark in suit on 27 March 1995 in his own name and he formed a new company Symonds Industrial Contractors Ltd on 5 October 1995. While he may have told colleagues in STS that he had applied to register the mark in suit, the Hearing Officer determined from the evidence that he had not informed them until 11 October 1995 that the application had been made in his own name. By this date he had been advised by the Registry that his application for registration had been accepted.
Under Section 3(6) the Hearing Officer concluded that the application for registration had been made in bad faith since, at the relevant date, Mr Symonds was still in the employment of STC who were using the mark in their own business at that time. Invalidity thus succeeded on this ground.
As regards the ground under Section 5(4)(a) - Passing Off - the Hearing Officer noted that the applicants for invalidity had carried on significant business in the period between 1993 and 1995 and he accepted that they had built up a reputation in their mark during this period. With use of the same mark by another party in the same field of business, and that Mr Symonds made clear in his evidence that his new company was in competition with the applicants, misrepresentation was bound to occur and there would be damage to the applicants business. Invalidity successful on this ground.
