Trade mark decision

BL Number

O/102/01

Decision date

6 March 2001

Hearing officer

Mr M Reynolds

Mark

DEVICE ONLY MARK

Classes

16

Proprietor

Stiefel Laboratories Inc

Applicant for Revocation

Andre Deutsch Ltd

Revocation

Sections 46(1)(a) & (b)

Result

Sections 46(1)(a) & (b) - Application succeeded

Points Of Interest

• Partial surrender - Although the proprietors notice on Form TM23 of partial surrender of the specification was unactioned before the decision was ready for issue, the Hearing Officer proceeded on the assumption that it reflected the proprietor’s wishes, realising that if overturned on appeal it would need to be processed by the Registry.

Summary

The onus being on the proprietor (per Section 100) to demonstrate use of the mark in suit in the face of the applicant’s challenge, the Hearing Officer concluded that the proprietor’s evidence failed to establish use in relation to a trade in the specified goods (ie printed matter, newspapers and periodical publications, excluding any such goods relating to reptiles or, according to an unactioned partial surrender of the specification, any such goods relating to matters other than medical matters and care of the skin). At best, the evidence established use simply in relation to invitations and other stationery concerned with arranging, and the conduct of, lectures/seminars organised as part of a so-called Skin Forum.

The Hearing Officer further concluded that even as used in that respect the mark differed in elements which altered its distinctive character. There was therefore no relief for the proprietor afforded by Section 46(2). The registration of the mark in suit was therefore revoked in its entirety with effect from completion of the registration procedure.

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URL: http://www.bailii.org/uk/cases/UKIntelP/2001/o10201.html