Trade mark decision

BL Number
Decision date
29 January 2001
Hearing Officer
Mr A James
38, 42
Registered Proprietors
Rodeo International Limited
Applicant for Invalidation & Revocation
The Timberland Co
Invalidity & Revocation
Section 47(1) & Sections 5(2)(b) & 3(6) Section 46(5)


Section 47(1) & 5(2)(b) - Invalidation successful

Section 47(1) & 3(6) - Invalidation failed

Section 46(5) - Revocation partially successful

Points Of Interest

  • 1. Acquiescence
  • The Hearing Officer considered the registered proprietors late request to add this defence to their counterstatement in some detail. In particular he concluded that mere delay in launching proceedings was not, of itself, a defence against an application for invalidation of a trade mark registration. A finding of "bad faith" on the registered proprietor’s part under Section 3(6) would exclude a defence of acquiescence under Section 48 of the Act.
  • 2. Hearsay Evidence
  • In these proceedings found to be "first hand" hearsay evidence under Sections 9(1) and (2)(a) of the Civil Evidence Act 1968 and thus admissible.


At the hearing the registered proprietors sought leave to amend their counterstatement by raising a defence of acquiescence under Section 48 of the Act. This request was analysed in some detail by the Hearing Officer before he refused to allow the amendment requested.

Under Section 5(2)(b) it was common ground that the goods at issue were identical so the Hearing Officer went on to compare the registered proprietors TIMBERWEAR mark with the applicants TIMBERLAND mark. In his consideration he took account of the applicants use of their mark in the UK since 1980 and the registered proprietors use from 1986 through to the relevant date of 20 June 1996. The Hearing Officer considered the prefix TIMBER to be a distinctive element for the goods at issue. The Hearing Officer considered the marks to be visually, aurally and conceptually very close and he concluded that the public could well be confused as to origin of the respective goods. With regard to the ground under Section 3(6) the Hearing Officer concluded that the respective parties’ evidence was not clear cut and in those circumstances he did not feel able to make a positive finding for the applicants.

With regard to the revocation action under Section 46(5) the applicants accepted that there had been some use by the registered proprietors of their mark. They, therefore, sought restriction of the registered proprietors specification and the Hearing Officer ordered that the specification be restricted to the goods in respect of which there had been actual use.

Full decision O/042/01 PDF document43Kb