Trade mark decision

BL Number
Decision date
15 February 2002
Appointed Person
Mr David Kitchin QC
Applicant for Revocation
Dialog ABC Limited
Registered Proprietor
Publicis Limited
Section 46(1)(b)


Section 46(1)(b): - Revocation failed.

Section 46(5): - Revocation failed.

Points Of Interest

  • 1. Proper approach in relation to use of a mark different from that registered
  • 2. Consent to use of a mark by the registered proprietor


As before the Hearing Officer, there were three matters for decision by the Appointed Person, namely use of the registered mark, consent of the registered proprietor and scope of the use of the mark.

As regards the first matter this related to the fact that the mark as used was in the form THE DIALOGUE AGENCY whereas the mark as registered was the single word DIALOGUE. The Hearing Officer had concluded that as the words THE and AGENCY were non-distinctive and descriptive in relation to a service the distinctive character of the mark DIALOGUE had not been altered. The Appointed Person supported this finding with some hesitation but concluded that the Hearing Officer was entitled to come to the view which he had reached in his decision.

The use of the mark at issue had been by a company other than the registered proprietor. Two declarants had stated that such use had been with the registered proprietor’s consent and in the evidence filed was a press release announcing that from 1 February 1995 the registered proprietor had agreed to transfer the business and goodwill to the present users of the mark. In the light of this evidence the Hearing Officer had accepted that consent had been given by the registered proprietor and the Appointed Person confirmed that in his view this was the right decision.

The final matter was whether or not there had been use of the mark in relation to all the services for which it was registered. Again the Appointed Person agreed with the Hearing Officer that use had been in respect of all the services listed in the specification.

Full decision O/084/02 PDF document37Kb