Trade mark decision

BL Number
Decision date
11 February 1998
Hearing Officer
Mr A James
Mr R Groeneveld
Andre Jacques Levy & Mairade Ann Levy
Sections 46(1), 46(3) & 46(5)


Section 46 - Revocation partially successful.

Points Of Interest

  • 1. Discretion. In this case the Hearing Officer exercised discretion in favour of the proprietor. However, in later cases the Registrar decided that she has no discretion under Section 46(1). ZIPPO Trade Mark [1999] RPC 173.
  • 2. Discretion. The applicant appealed this decision to the Appointed Person. Because of the importance of a decision on the matter of discretion under Section 46(1) the Registrar requested the proceedings to be transferred to the High Court. The registered proprietor made a similar request.
  • The Appointed Person accepted that there was a point of legal importance to be decided and agreed to refer the matter to the High Court. He, however, noted that such references would only be justified in special circumstances as the point of having an appeal mechanism to the Appointed Person was to keep costs to a minimum.
  • (Appointed Person decision dated 2 July 1998).
  • The appeal to the High Court was not pursued by the applicant.


The application to revoke the registration was made on 12 January 1996 and the Hearing Officer specified that the relevant five year period should run from 12 January 1991 to 12 January 1996. The evidence filed by the registered proprietor indicated that sample cigarettes had been produced in Greece under the mark and that in the course of negotiations to find financial backers and distributors some samples had been handed out in the UK. Before the end of the relevant period negotiations had commenced with Imperial Tobacco Ltd and this led to an agreement dated 19 November 1996 which gave Imperial Tobacco an exclusive right and licence to use the mark in the UK and overseas for the next twenty years.

The Hearing Officer carefully reviewed the evidence filed and decided that the distribution of samples in the circumstances outlined, did not constitute genuine use of the trade mark. Nor did a lack of finance during the relevant period constitute proper reasons for non-use. In his consideration under discretion the Hearing Officer took account of the agreement reached with Imperial Tobacco and decided that the mark should remain on the Register for cigarettes. All other goods in the specification being cancelled.