Trade mark decision

BL Number

O/375/03

Decision date

1 December 2003

Hearing officer

Mr J MacGillivray

Mark

GENKLENE

Classes

01

Registered Proprietor

Amity UK Limited

Applicants for a Declaration of Invalidity

Ineos Chlor Limited

Application for Invalidation

Section 47(1) (citing Sections 3(3)(a); 3(3)(b) & 3(6)) & Section 47(2)(b) (citing Section 5(4)(a))

Result

Application for invalidation under Section 47(2)(b) (Section 5(4)(a)) successful. No formal findings on the remaining grounds.

Points Of Interest

• 1. Passing-off; continuing goodwill in defunct products/marks.

Summary

Registrations of the mark GENKLENE had formerly been owned by ICI, (the predecessor in title to the applicant) and had been used in connection with a chemical product which had later fallen foul of EU legislation. Production ceased (although stocks could continue to be sold until the year 2000) and the registrations were allowed to lapse. The mark was later adopted by the registered proprietor but the applicant claimed continuing rights in it.

The Hearing Officer dealt first with the matter under Section 5(4)(a). The relevant date was 20 November 1998, at which time production of the ICI product had been stopped for around 3 years. The question was therefore one of the ownership of the continuing goodwill if any, at that time.

Having reviewed the evidence the Hearing Officer concluded that at the relevant date ICI had not abandoned the marks and the goodwill in them rested with them. A likelihood of confusion and consequent damage could be presumed. The application under Section 5(4)(a) succeeded accordingly and the Hearing Officer did not go on to consider the other grounds cited.

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