Trade mark decision

BL Number
Decision date
10 May 1999
Appointed Person
Mr S Thorley QC
Applicant for Revocation
Nicholas Dynes Gracey
Registered Proprietor
Tritonstyle Limited
(i) Request by the registered proprietors to refer appeal to the Appointed Person to the High Court.


Request for referral of proceedings to High Court: - Request refused.

Request for referral of proceedings to High Court: - Request refused.

Request for discovery (disclosure): - Request refused.

Request for discovery (disclosure): - Request refused.

Points Of Interest

  • 1. See also Hearing Officer’s decision dated 27 November 1998 ( BL O/245/98) and Appointed Person’s decision ( BL O/169/00) (2000 RPC 35).


This was an interim decision on an appeal by the applicant of the Hearing Officer’s decision dated 27 November 1998 in which he allowed partial revocation by restricting the scope of the registered proprietors registration.

As regards the question of referral the Appointed Person stated that in general this should only occur where a point of general legal importance was at issue. Any other type of reference would be very rare. In this case the registered proprietors listed the following matters which in their view justified a reference.

(a) the amount of use that is needed in order to show “genuine” use;

(b) the amount of evidence that needs to be adduced, and whether more such evidence can be adduced on appeal, and the governing principles, in respect of (i) goods originally removed from the specification and (ii) goods that were not originally removed from the specification, but which might be vulnerable to further attack on appeal;

(c) the relevant period when that use should occur;

(d) the nature of the appeal, ie whether it is a re-hearing on an appeal proper and whether there is difference between the High Court and the appointed person;

(e) the correct procedure that should be adopted once an appeal has been lodged by one party, ie the status and probity of any cross-appeal or respondent’s notice and the proper form of any such documents/comments/observations;

(f) the issue of redaction of scandalous material; and

(g) the issue of costs, especially when one party has been held to have made scandalous allegations

The Appointed Person considered each of the matters raised and decided with the exception of (c) that none raised matters of general legal importance. As regards (c) that matter was not an issue in these proceedings. The Appointed Person noted that the Registrar was also against referral as was the applicant on cost grounds. In conclusion therefore the Appointed Person refused to refer these proceedings to the High Court.

With regard to the question of disclosure the Appointed Person was against any blanket order and noted that the registered proprietors wished to file further evidence for consideration. He ordered that such evidence should be filed and copied to the applicant. If the applicant wished to oppose the admission of such evidence or pursue his request for disclosure he should state precisely the documents he wished to have disclosed. Request for discovery refused at this stage.

Full decision O/135/99 PDF document41Kb