Decon Laboratories Ltd v Fred Baker Scientific Ltd

Date

13 November 2000

Legislation

Trade Marks Act 1994 ss.10, 46

Keywords

Revocation; non-use; Infringement; identical goods; sanitary substances; identical marks; suffix; likelihood of confusion

Counsel

Thomas Moody-Stuart for C, Douglas Campbell for D

Solicitors:

Denton Wilde Sapte for C, KLegal for D

Judge:

Pumfrey J

Court:

Chancery Division

Reported:

[2001] ETMR 46, [2001] RPC 17

Summary:

The Claimant was the registered proprietor of the mark DECON in respect of disinfectants and sanitary substances etc., and sold principally 'Decon 90' for use in laboratories. The Defendants were the importer and manufacturer respectively of goods called DECON-ahol etc. for use in clean rooms.

In assessing how far to revoke a mark for non-use in respect of particular goods or services, the guiding principle is whether it would be right to make the registered proprietor demonstrate confusion or otherwise rely on section 10(2) rather than enjoy the absolute protection of section 10(1); the question is what is a fair specification having regard to the use that has been made of the mark.

Decision:

Accordingly, the Claimant's specification was to be qualified by the addition of the words 'all for non-domestic use'. Nonetheless, there was still infringement under both sections 10(1) and 10(2).

As for the CTM, it was not bad faith to register the mark in respect of a broader specification, as it was clear that there was no requirement to have an intention to use the mark for five years.