Trade mark decision

BL Number
O/079/98
Decision date
7 April 1998
Hearing Officer
Mr S J Probert
Mark
TELECOMMUNICATIONS
Classes
16
Applicant
Horizon House Publications Inc
Opponent
Hutchison Telecommunications (UK) Ltd
Opposition
Section 3(1)(a), (b), (c) & (d)

Result

Section 3(1)(a): - Opposition failed.

Section 3(1)(b), (c) & (d): - Opposition succeeded.

Points Of Interest

  • Delay in issuing decision. Discussions between the parties were in progress and the Hearing Officer delayed issuing his decision, at their request, in the hope that a settlement could be reached.

Summary

The opponents filed dictionary references and other evidence to show the descriptive nature of the mark applied for. They also filed evidence to show that others use the term in the name of their companies and descriptively.

The applicants filed details of use of the mark since 1967 and stated that the mark had been registered in the USA and Canada. Four declarations with long experience in the telecommunications industry all recognise the mark TELECOMMUNICATIONS as a unique publication of horizon.

Under Section 3(1)(a) it was accepted by the opponents and by the Hearing Officer that the mark at issue did in fact meet the requirements of Section 1(1). Opposition thus failed on this ground.

As regards the ground under Section 3(1)(b), (c) and (d), the applicants pointed to the fact that the Registrar had twice previously considered the registrability of the mark in suit; at a hearing at the ex-parte stage and following the filing of observations from a third party. The Hearing Officer noted these submission but determined that he had to consider the matter afresh in these contested proceedings. The evidence showed that the mark has a generic meaning and is used in the telecommunications filed; also the mark as used was in a very specific typeface whereas the mark was applied for in block capital letters. There was in fact no use, whatsoever, of the mark as applied for. Thus the mark applied for had not acquired a distinctive character and the opposition therefore succeeded under Section 3(1)(b), (c) and (d).

Full decision O/079/98 PDF document36Kb