Trade mark decision

BL Number: O/037/06
Decision date: 1 February 2006
Hearing Officer: Mr M Reynolds
Mark: INTELMARK
Classes: 35
Registered Proprietor: CPM United Kingdom Limited
Applicant for a declaration of invalidity: Intel Corporation; Application for Invalidation: Section 47(2)(a) (citing Section 5(3))* (*Another ground under Section 5(4)(a) was withdrawn at the hearing).

Result

Application for declaration of invalidity, Section 47(2)(a) (citing Section 5(3)): - Failed.

Points Of Interest

1. Section 5(3): detriment; due cause.
2. Section 48: acquiescence.

Summary

In response to the action under Section 5(3) the registered proprietor relied on the statutory defence of acquiescence under Section 48. The Hearing Officer addressed this matter first. Having reviewed the evidence however he concluded that there remained unresolved doubts about the actual marks used in past contacts between the parties, and it followed that the registered proprietor could not rely on an acquiescence defence under Section 48. The Hearing Officer therefore turned to the main matter under Section 5(3).

After a detailed review of the matter, however the Hearing Officer concluded that it had not been shown that use of the mark on the services applied for (marketing and telemarketing services) would entail any material damage to the distinctiveness or singularity of the Intel brand.

For the sake of completeness he went on to consider a possible ‘due cause’ defence had his finding been otherwise. Having done so he found he was not persuaded that the registered proprietor would have succeeded with such a defence. However, in view of his main finding under Section 5(3), he did not make a formal finding on that point.

Full decision O/037/06 200Kb