Trade mark decision

BL Number

O/265/02

Decision date

10 June 2002

Hearing officer

Mr Geoffrey Hobbs QC

Mark

DAAWAT

Classes

30

Registered Proprietor/Appellant

A1 Trading Ltd

Applicants for Invalidation/Respondent

LT Overseas Ltd

Appeal to the Appointed Person in Invalidation Proceedings

Result

Appeal dismissed.

Points Of Interest

• 1. Article 4(4)(g) of the Directive not reflected in Trade Marks Act 1994
• 2. Bad faith : Section 3(6) allows for objections to be raised by a third party and is not confined to matters between an applicant and the Registrar.

Summary

At first instance the Hearing Officer had found in favour of the applicants for invalidation, in respect of some of the goods in the registered proprietor’s specification (see BL O/227/01). The registered proprietor appealed to the Appointed Person against that decision. The Appointed Person permitted the filing of additional evidence on appeal because it corrected some of the earlier evidence, and because both parties agreed to its admission.

Having read and re-read the evidence filed at first instance the Appointed Person was satisfied that it was open to the Hearing Officer to have made the findings that he did on the basis of it, and the additional evidence filed on appeal had pointed to the correctness of those findings.

Turning to the registered proprietor’s contention that those findings were nevertheless insufficient in point of law to justify a holding of bad faith under Section 3(6), the Appointed Person first noted that Section 3(6) is an absolute ground of refusal and under it the Registrar can prevent registration with or without the intervention of any other party; likewise, the Registrar can apply to the Court for invalidation in the case of bad faith (Section 47(4)). Section 3(6) "can serve as a free-standing basis of objection" and it "strikes at behaviour of a kind that need not otherwise be objectionable".

An absence of a relative ground for refusal under Section 5 is not a bar to an objection under Section 3(6), he said, but noted that this called into question the significance of the fact that the relative ground provided by Article 4(4)(g) of the Directive is not available as a relative ground under Section 5 of the Act.

However, in his view Section 3(6) allows objection on the ground of bad faith to be raised in relation to matters arising between applicants and third parties as well as in matters arising between applicants and the Registrar.

In the result the Appointed Person upheld the Hearing Officer’s decision and dismissed the appeal.

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