Trade mark decision

BL Number
O/003/01
Decision date
5 January 2001
Hearing Officer
Mr S P Rowan
Mark
SECOND SKIN
Classes
05
Applicant for Revocation
Second Skin Pty Limited
Registered Proprietor
Spenco Medical Corporation
Revocation
Section 46(1)(b)

Result

Section 46(1)(b) - Revocation partially successful.

Points Of Interest

  • 1. In revocation proceedings use of a mark in a different form from that registered may protect the registration. In this case the Hearing Officer decided that use of 2ND SKIN saved the mark SECOND SKIN but in so doing he rejected arguments based on passing off rights (WAGAMAMA) and the test for a series of marks as set down in Section 41(2) (ELLE). He left open the question whether oral similarity would satisfy the requirements of Section 46(2).

Summary

It was not disputed by the applicants that the registered proprietor had used the mark 2ND SKIN in a genuine way but said it had shown no use of the mark as registered SECOND SKIN. The parties disagreed as to the impact of such use but the Hearing Officer concluded that use of 2ND SKIN satisfied the requirements of Section 46(2) in that it was use of the registered mark in a form differing in elements which did not affect the distinctive character of the mark in the form in which it was registered. The registered mark covered a wide range of bandages and dressings in Class 5 but the evidence filed showed only use on a particular range of dressings. The Hearing Officer, therefore, restricted the specification of the registered mark to "Dressings, all for medical or surgical use".

Full decision O/003/01 PDF document22Kb