Trade mark decision

BL Number

O/046/98

Decision date

17 February 1998

Hearing Officer

Mr M Tuck

Mark

MICRO PLANNER

Classes

09

Applicant for Invalidity

Micro Management Inc

Registered Proprietor

Micro Planning International Ltd

Invalidity

Sections 47(1) & 3(6)

Result

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.

Summary

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.