Trade mark decision

BL Number

O/066/04

Decision date

15 March 2004

Hearing Officer

Dr W J Trott

Mark

EOGB

Classes

11

Applicants for Invalidity

1. Enertech Limited 2. Bentone AB 3. EGP EO & GB Limited

Registered Proprietor

EOGB Energy Products Limited

Invalidity

Section 47(1) & (2) based on Sections 5(4)(a) & 3(6)

Result

Section 3(6) - Invalidity action failed.

Section 5(4)(a) - Invalidity action failed.

Points Of Interest

• 1. None

Summary

The first applicant in these proceedings owned the second and third applicants. The second applicant, a manufacturer and trader established the third applicant in the UK about 1987 under the then name Electro Oil & Gas Burners Limited to market and distribute its goods. That company manufactured and sold some goods under the mark EOGB but in the main it sold goods on behalf of the second applicant under their marks. The company ceased to sell EOGB marked goods in 1990 and stopped trading in 1992.

A Mr Dempsey who had been employed by the third applicants was instrumental in the setting up of the registered proprietors in 1993 to act as a distributor for the second applicants’ goods and also to trade on its own account by selling other manufacturers products. Two distribution agreements were entered into with the second applicants and trading arrangements continued until 1992 when there was a breakdown in relations.

The first mark in suit was registered in 1995 and the series of three marks was registered in 1992. It was accepted by both sides that the third applicants had goodwill in the mark EOGB when it ceased trading in 1992 but the Hearing Officer had to consider the position in 1995 and 1992 in relation to the registration of the marks in suit. There was also the impact of the two trading agreements between the parties to consider.

The Hearing Officer noted that the third applicants were owned by the first applicants who appear not to have been involved in trade. Thus any goodwill generated may have accrued to the third applicants themselves even though it was known that they had a trading association with the second applicants. The two trading agreements between the second applicants and the registered proprietors appeared more to do with distribution of the second applicants products rather than a license to use the mark EOGB. There was no claim to ownership of this mark in the agreements by the second applicants nor the granting of a license to use. In any case the second applicants did not appear to own the mark EOGB since both the second and third applicants were wholly owned by the first applicants.

The Hearing Officer dealt extensively and in great detail with the claims and counterclaim of the parties, together with the questions of goodwill and residual goodwill. Overall he concluded that the registered proprietors owned the marks in suit and that they had acquired any goodwill existing in 1992 and incorporated it into the new business. The application for invalidity under Section 5(4)(a) thus failed.

In view of his decision under Section 5(4)(a) as regards ownership of the marks in suit, the Hearing Officer concluded that the application under Section 3(6) also failed.

Full decision O/066/04 132Kb