Trade mark decision

BL Number
O/029/98
Decision date
27 February 1998
Hearing Officer
Mr M Knight
Mark
GRANIT
Classes
03
Applicant for Revocation
Cussons (International) Ltd
Registered Proprietor
Jason Saba
Revocation
Sections 46(1)(a) & (b), 46(2) & discretion

Result

Sections 46(1)(a) & (b) - Revocation successful.

Section 46(2) - Revocation successful.

Discretion - No exercise of discretion in favour of the Registered Proprietor.

Points Of Interest

  • 1. Discretion : In later decisions the Registrar decided that she did not have any discretion under Section 46. (See for example ZIPPO Trade Mark [1999] RPC 173. However, the ECJ have not yet issued any Ruling on the matter.

Summary

The registered proprietor filed details of use of the mark GRANITE as distinct from the registered mark GRANIT and claimed that as the two marks were so similar the use of the mark GRANITE equates to use of the registered mark. The applicants for revocation disputed that the use of GRANITE equated to use of the mark GRANIT and filed evidence which cast some doubt on the accuracy of the proprietor’s evidence. These doubts were further exposed during Mr Saba’s cross-examination at the hearing.

Under Sections 46(1)(a) and (b) and 46(2) the Hearing Officer reviewed the evidence before him and concluded that there had been no use of the registered mark during the relevant period. Assuming there had been use of the mark GRANITE, which the Hearing Officer doubted, he did not accept that such use would constitute use of the registered mark GRANIT. The registered mark is an invented word whereas the word GRANITE is a dictionary word with its own meaning. Thus the addition of the letter E not only serves to make the two marks visually different but it changes the meaning of the mark in the sense that it gives it a meaning which it did not previously have. The applicant thus succeeded on both grounds.

The Hearing Officer went on to consider the matter of discretion but decided that as no significant reasons had been provided to support a request, he declined to exercise my discretion.

Full decision O/029/98 PDF document31Kb