Trade mark decision

BL Number
Decision date
24 January 2002
Hearing Officer
Mr E S Smith
29, 30
Registered Proprietor
Ian McDonald & Zia Khurshid
Applicants for Declaration of Invalidity
Ülker Gida Sanayi Ve Ticaret AS
Application for Invalidation
Sections 47(2)(a) & 47(2)(b) citing Sections 5(2)(a); 5(2)(b); 5(3); 5(4)(a); 5(4)(b); 3(6) & 32(3)


Application for invalidation under Section 47 succeeded

Points Of Interest

  • 1. Prima facie case must be made out even in undefended actions for invalidation.


The registered proprietor did not file a counterstatement. Nevertheless, the Hearing Officer (following the FIRETRACE case BL O/278/01) asked for evidence from the applicants sufficient for the purposes of establishing a prima facie case in support of their allegations. The Hearing Officer dealt firstly with the Section 3(6) case. He noted the very close resemblance of the marks; the lengthy and undisputed history of use of the applicants’ marks; the fact that no authorisations had been given to the registered proprietors; the broad specification of foodstuffs for which the mark in suit is registered and the fact that the registered proprietors had not contested the facts or provided any alternative version of events. He considered that a prima facie case had been made out and the applicants succeeded under Section 3(6).

He went on to find that the application succeeded under Section 5(2)(b) also, but only partially by reason of the dissimilarity of some of the goods.

Full decision O/035/02 PDF document19Kb