Trade mark decision

BL Number
Decision date
17 February 1998
Hearing Officer
Mr M Tuck
Applicant for Invalidity
Micro Management Inc
Registered Proprietor
Micro Planning International Ltd
Sections 47(1) & 3(6)


Sections 47(1) & 3(6) - Invalidity action failed.

Points Of Interest

  • 1. In their application the applicants, as an alternative to invalidation, had asked that the Register be rectified by the substitution of the applicant’s name for the name of the proprietor. The Hearing Officer decided that he could not consider such a request as such an application must be made in the context of Section 64.


These proceedings involved what had previously been associated or linked companies and there had obviously developed a rift between the USA and UK sides of the business. The mark had been devised by a Mr Nixon from Bristol in 1980. A company was set up called Micro Planning Software Ltd but following name changes became Micro Planning International Ltd in 1987. Application for the mark in dispute was made in 1988. During the period a company was set up to market the product in the USA, Micro Planning Software USA (later Micro Planning International Inc). A third company Micro Management Inc was formed to hold assets of the other two companies but the evidence surrounding its role was disputed.

Under Section 3(6) the Hearing Officer noted that the UK company appeared to have traded and used the mark MICRO PLANNER in the UK since 1980. He therefore believed that it had acquired or created common law rights in the mark. A purported assignment by Mr Nixon in 1994 did not affect the registered proprietor’s rights in the UK since he did not personally own the rights in the UK. In all the circumstances the Hearing Officer concluded that the applicants had not proved that the registered proprietor’s application in 1988 had been made in bad faith.