Trade mark decision

BL Number

O/159/00

Decision date

4 May 2000

Hearing officer

Mr A James

Mark

RIKER

Classes

05

Registered Proprietor

Glaxo Group Ltd

Applicant for Declaration of Invalidity

Riker Laboratories Inc

Application for Declaration of Invalidity

Section 47(1) and Sections 3(1)(b), (c) & (d); Section 3(3)(a)

Result

Section 47(1) - Invalidation successful

Section 3(1)(b) - Registration declared invalid

Section 3(1)(c) - Ground not considered

Section 3(1)(d) - Invalidation failed

Section 3(3)(a) - Invalidation failed

Points Of Interest

• (a) Amendment of mark - proprietor's application to amend mark, by specifying respective Pantone colours, accepted as voluntary limitation of infringement rights under Section 9 (no provision to amend colour), but limitation had no bearing on distinctiveness. (b) Evidence of use - In the absence of the original evidence upon which acceptance was based, the Hearing Officer proceeded on the assumption that it was no better than that filed in these invalidation proceedings.

Summary

The mark in suit was examined against the requirements of the Trade Marks Act 1938 and accepted on the basis that it had acquired a distinctive character through use, thereafter being placed upon the 1994 Act Register. The Hearing Officer took the view that the mark consisted essentially of the specified colours, the inhaler body being of conventional shape, and under Section 3(1)(b) he found that the colours could not be regarded as having an inherently distinctive character, in respect of inhalers, as of the relevant date.

He further found that the proprietor had failed to adduce sufficient evidence to satisfy the proviso to Section 3, noting in particular that, although the mark was used for around 5 years prior to the relevant date, there was no evidence from the trade or members of the public attesting to the fact that it had acquired the necessary distinctiveness. Nor was there evidence that the colours had been used in a overtly trade mark manner. He therefore held that the mark was registered contrary to Section 3(1)(b), and since on the evidence the proprietor's position was, if anything, worse by the date of the application for invalidation there was no basis for exercising the proviso to Section 47(1) in the proprietor's favour. The registration was therefore declared invalid.

The Hearing Officer found no basis in the evidence to uphold objection under Section 3(1)(d) or 3(3)(a), and no need to reach a conclusion under Section 3(1)(c).

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