Trade mark decision

BL Number

O/373/02

Decision date

30 August 2002

Hearing officer

Professor Ruth Annand

Mark

POINT FOUR

Applicant

Nettec Solutions Ltd (Previously Point 4 Consulting Limited)

Opponent

Planet Epos Limited

Opposition

1. Section 5(4)(a). 2. Registrar’s decision defective. 3. Request for refusal of application by opponents.

Result

Registrar’s decision defective - Proceedings remitted to Registrar.

Request for refusal by opponents: - Request failed.

Points Of Interest

• 1. See Hearing Officer’s decision dated 14 August 2001 (BL O/350/01).
• 2. Following the issue of the Hearing Officer’s decision the applicants filed a Form TM 21 outside the time frame allowed and the Appointed Person questioned whether the Registry had been correct to action this form and advertise the amended specification. No final decision on general practice but as specification not acceptable the TM 21 should not have been actioned in this case.

Summary

This was an appeal from the Hearing Officer’s decision of 14 August 2001 (BL O/350/01).

Prior to the hearing before the Registrar the applicant had filed restricted specifications which were somewhat unclear. The Hearing Officer decided the opposition in favour of the opponents but proposed that the application could proceed if the specifications were amended as set down in his decision. In making his proposal, however, the Hearing Officer widened the scope of the specifications and as this exceeded the Registrar’s statutory powers the Hearing Officer’s decision was defective. The Appointed Person thus set aside the decision and remitted the proceedings to the Registrar.

In his decision, as indicated above, the Hearing Officer had proposed in his decision that the application could proceed if the applicants filed a Form TM 21 restricting the specifications of the application within one month from the end of the appeal period. As the opponents had appealed the applicant had not filed a Form TM 21 within the time frame suggested. The opponents therefore requested refusal of the application.

However, it is the Registrar’s practice to suspend matters when an appeal is filed until the outcome of the appeal is known and the Appointed Person considered that the Registrar had the necessary powers to regulate practice in this area. The Registrar to consider whether it was necessary to issue a Practice Direction to clarify the current procedures.

The Appointed Person also considered whether the Registrar could require amendment of an application if it was decided that an application could proceed for certain goods. Taking account of Article 13 the Appointed Person decided that the Registrar had the necessary power but she suggested that the current wording used by Hearing Officer’s should be modificated to make clear that one or both parties could comment on any restricted specification proposed; file evidence and or request a hearing. This to comply with the requirements of Rule 54 of the Trade Mark Rules 2000.

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