Trade mark decision

BL Number
Decision date
29 January 2008
Hearing Officer
Mr G Salthouse
Karl Storz GmbH & Co KG
Bausch & Lomb Incorporated
Sections 3(6) & 5(2)(b)


Section 3(6): Opposition failed. Section 5(2)(b): Opposition failed.

Points Of Interest

  • In her decision dated 8 October 2008 (BL O/277/08) the Appointed Person allowed the opponent's appeal against the Hearing Officer's decision that the mark in suit fell within the terms of the 1982 Agreement between the parties.


The opponent and applicant in these proceedings signed an Agreement in 1982 (addendum added in 1985) regarding the respective use by the two parties of the word STORZ. In general terms the applicant agreed to use the word STORZ with other words such as GERMANY, KARL and ENDOSCOPIE whereas the opponent would include such terms as USA, INSTRUMENT or STORZ (stylised) in its marks.

The opponent claimed that the mark in suit fell outside the terms of the agreement but this was disputed by the applicant. It stated that it has used the mark in suit since 1988 and further stated that the opponent’s predecessors had been advised about the mark in suit and had raised no objection. It had thus given defecto consent to the use and registration of the mark in suit.

It was agreed at the Hearing that if the Hearing Officer decided that the mark in suit fell within the terms of the agreement, which he did, the grounds under Sections 3(6) & 5(2)(b) would fall away. Thus opposition on these grounds failed.

As regards the matter of consent the Hearing Officer accepted that the opponent and its predecessor had been aware of the applicant’s intention to use the mark in suit from 1985 onwards. No action had been taken to object to such use and the Hearing Officer decided that this amounted to consent.

Full decision O/022/08 PDF document212Kb