Trade mark decision

BL Number
Decision date
14 January 2002
Hearing Officer
Mr J MacGillivray
01, 42
Salford Ultrafine Chemicals Research Limited
Whyte Chemicals Limited
Sections 3(1)(a), (b) & (c)


Sections 3(1)(a), (b) & (c) - Opposition failed

Points Of Interest

  • None


The opponents opposition was based on their claim that the word ULTRAFINE is descriptive in that it is commonly used in the chemical trade to describe high quality, purity or particle size. They filed evidence to support their claims. The applicants claimed use of their mark from 1991 onwards and also pointed to the fact that they had a registration for the mark ULTRAFINE and device in Class 42 in relation to chemical research services.

Under Section 3(1)(a) the Hearing Officer noted that the test under this section was not onerous and he concluded that the mark as a totality was capable of being distinctive. Opposition failed on this ground.

Under Sections 3(1)(b) and (c) the Hearing Officer reviewed the evidence filed by the applicants and determined that it did not assist their case as the use related to a different mark. He also noted the descriptive and non-distinctive nature of the word ULTRAFINE, the dominant element in the mark, and considered whether the mark as a whole had sufficient surplus or capricious addition to justify registration. Having considered the impact of the device element in the mark the Hearing Officer concluded that there was sufficient surplus and that registration was not barred by Sections 3(1)(b) and (c). The opponents had also asked for a disclaimer to be entered in respect of the word ULTRAFINE but as the applicants were not prepared to enter a disclaimer, the Hearing Officer noted that the Registrar had no power to request the entry of a disclaimer.

Full decision O/030/02 PDF document59Kb