Trade mark decision

BL Number

O/257/00

Decision date

26 July 2000

Hearing officer

Mr A James

Mark

AUTONET

Classes

35

Registered Proprietor

2nd Byte Limited

Applicant

Cendant Business Answers (Europe) Plc

Invalidation

Sections 47(1), 47(5), 3(6) & 32(3)

Result

Sections 47(1) & 3(6) - Invalidation failed

Sections 47(5) & 32(3) - Invalidation failed

Points Of Interest

• The "bad faith" test under Section 3(6) as regards intention to use was an objective one and was not dependent on the state of mind of the applicant. A finding of bad faith may be fully justified even in a case where the applicant sees nothing wrong in his own behaviour.

Summary

The registered proprietors had filed for a wide specification reading "Provision of advertising and business information". It appeared from the applicants application that the registered proprietor had only provided advertising services relating to the sale of second-hand cars on the Internet. Subsequently the registered proprietor filed a formal request to amend his specification to read "Provision of advertising and business information in relation to the automotive industry".

The applicants principal evidence as to a claim to bad faith was the finding of fact of the registered proprietors trading activities and a report of a conversation between the applicants Trade Mark Agent and the Managing Director of the registered proprietor when it was claimed that the Managing Director had said "My Company has gone to some trouble to achieve registration and it wants to keep the specification as broad as possible". The Hearing Officer decided in all the circumstances that the words were somewhat ambiguous and without having a full report of the whole conversation to place the words in context, he was reluctant to draw an adverse influence from the words. He therefore, concluded that applicants failed on this ground.

The Hearing Officer went on to consider whether in the light of the evidence filed and the circumstances of this case, he should restrict the revised specification in any way in the context of the intention to use declaration under Section 32(3). In summary he decided that no partial invalidation was justified.

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