Trade mark decision

BL Number: O/017/04
Decision date: 16 January 2004
Appointed Person: Mr David Kitchin QC
Mark: ELIZABETH EMANUEL
Classes: 25
Applicant: Continental Shelf 128 Limited
Opponent: Elizabeth Florence Emanuel
Opposition: Sections 3(3)(b), 3(6) & 5(4)(a)

Result

A submission to be made to the European Court of Justice in relation to deception following assignment.

Points Of Interest

1. See Hearing Officer’s decisions dated 17 October 2002 (BL O/424/02 and BL O/425/02).
2. See also Appointed Person’s decision dated 22 June 2003 (BL O/196/03). Request to transfer proceedings to the High Court refused.
3. Guidance of European Court of Justice [2006] ETMR 56.
4. Appointed Person decision dated 3 November 2006 (BL O/317/06). Hearing Officer’s decision confirmed.

Summary

The Hearing Officer in the above proceedings found for Continental Shelf 128 Limited. (Decisions dated 17 October 2002) (BL O/424/02 and BL O/425/02). A request by Continental Shelf 128 Limited that the appeals to the Appointed Person be referred to the High Court was refused by the Appointed Person in his decision dated 27 June 2003 (BL O/196/03).

The background to these proceedings is set down in the Hearing Officer’s decision. Briefly Elizabeth Emanuel is a famous dress designer who had her own company at one stage. She later set up a company with Continental Shelf’s predecessors and assigned her registered mark which consisted of her name and device. She then left that company but Continental Shelf retained ownership of the mark.

Continental Shelf later applied to register the ELIZABETH EMANUEL name solus and the Hearing Officer found that they were entitled to do so. He also refused the application to revoke the existing mark.

The appeal attacked the Hearing Officer’s decision on two grounds:

(i) he wrongly assessed the evidence; and

(ii) he applied the wrong legal test when considering sections 3(3)(b) and 46(1)(d) of the Act.

The Appointed Person expressed some doubts about the Hearing Officer’s decision and suggested that he might have been more precise when considering the nature of any deception which might have occurred after the separation of the two parties. He also stated in respect of the revocation action that the relevant date was the date of the application for revocation and not the date of the hearing.

The Appointed Person went on to consider the nature of deception envisaged by Articles 3(1)(g) and 12(2)(b) of the Directive while at the same time recognizing that the Directive allowed the Assignment of goodwill and marks in a business. Thus there was likely to be a period where the public might be deceived.

With the agreement of both parties he suggested that a submission as regards these matters should be submitted to the European Court of Justice for guidance. The wording of the relevant question to be agreed with the parties.

Full decision O/017/04 57Kb