Trade mark decision

BL Number

O/072/03

Decision date

18 March 2003

Hearing Officer

Mr M Reynolds

Mark

COALTRANS

Classes

39

Applicants for Invalidity

Coaltrans Conferences Ltd

Registered Proprietor

Coaltrans Publishing Ltd

Invalidity

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

Result

Sections 47(1) & 3(6): - Application for Invalidity successful.

Sections 47(2)(b) & 5(4)(a): - Not considered.

Points Of Interest

• 1. The proprietors claimed a lack of knowledge of the applicants activities but this was at odds with the evidence placed before the Hearing Officer.

Summary

The two companies involved in this dispute had a common parent company called the CPS Group. That Company was established in 1973 and organised conferences relating to coal trading and transportation. From 1988 a magazine was published by Coaltrans Publishing Limited (CPL) a subsidiary of the CPS Group. Later in 1993 the Conference side of the business Coaltrans Conference Ltd (CCL) was sold to a Mr Norman Penwarden, who is currently the majority shareholder.

In 1993 CCL and CPL entered into an informal agreement so that CCL allowed CPL the principal distribution rights for their magazine COALTRANS INTERNATIONAL at all conferences run by CCL in return for free advertising and publicity in the magazine.

In their evidence the applicants (CCL) showed that when the conference business was sold to the present owners the unregistered mark COALTRANS was recognised as an asset and mentioned in the transfer documents. In relation to the bad faith ground the Hearing Officer noted that the two parties had had a close working arrangement from 1993 onwards and he was satisfied that the current proprietors (CPL) must have been aware of the applicants rights in relation to the organising and conducting of conferences etc when they made their application to register the mark in suit on 17 September 1996. In the Hearing Officer’s view this was an act of bad faith in relation to the organising and conducting of conferences.

The Hearing Officer noted that other services were included in the registration such as the organising of training lectures and seminars, management training etc. Given the proximity of these services to the applicants established area of activity the Hearing Officer decided that the applicants claim of bad faith against the whole of the registration had been made out.

In view of his decision on the Section 3(6) ground the Hearing Officer did not consider the Section 5(4)(a) ground.

Full decision O/072/03 27Kb