Trade mark decision

BL Number: O/086/99
Decision date: 18 March 1999
Hearing Officer: Mr M Knight
Mark: RITVIK/KIRKBI
Classes: 28
Applicant: Kirkbi AG
Opponent: Ritvik Toys Inc
Opposition: Change of Opponent in Opposition Proceedings. Trade Mark Rules 1994

Result

Change of Opponent in Opposition proceedings - Request refused

Points Of Interest

1. In the light of this decision the Registrar issued a practice notice, the new practice to be effective from 3 February 1999.
2. The decision reached in this case was followed by the Hearing Officer in his decision dated 7 July 1999 BL O/187/99.
3. This latter decision was appealed to the High Court. In his decision dated 18 January 2000 (HC 1999 No 03286) Mr Justice Pumfrey held that the Registrar had inherent powers to allow the substitution of opponents in opposition proceedings.

Summary

Following the launch of opposition proceedings in January 1998 the opponents agents wrote to the Registrar to say that on 30 June 1998 Ritvik Toys Inc (the opponents) had amalgamated with its parent company Ritvik Holdings Inc. The opposition was therefore to proceed in the name of Ritvik Holdings Inc. Appropriate documentation confirming the change was filed and the new opponents accepted liability for costs. The applicants objected to the proposed change.

The opponents argued that there had in fact been no change in opponent since the opposition was now to go ahead in the name of the holding company rather than a wholly owned subsidiary. Also "all of the property" had been transferred to the holding company and this included all litigation in progress.

It was common ground between the parties that the Registrar’s Work Manual indicated that in proceedings under either the 1938 Trade Marks Act or the Trade Marks Act 1994, the Registrar would be prepared to allow a change of opponent in the exercise of his discretion. However, as the Trade Marks Rules 1994 applied to these proceedings the Hearing Officer concluded that opposition must be lodged within a 3 month period following advertisement, and there was no provision for extending this period. He held that the Registrar had no powers to allow substitution of opponents in opposition proceedings.

Full decision O/086/99 21Kb