Trade mark decision

BL Number

O/088/07

Decision date

27 March 2007

Hearing Officer

Mrs A Corbett

Mark

BUSINESS ZONES FROM O2 BUSINESS ZONES (2 seperate marks)

Classes

09, 30, 38

Applicant

O2 Holdings Limited

Opponent

T-Mobile (UK) Limited

Opposition

Hearing to consider amendment of counterstatement and Form 8

Result

Request to amend Form 8 and Counterstatement: Request refused. However, amended Form TM7 required and if filed applicant would be allowed to amend Form TM8 and counterstatement.

Points Of Interest

• The opponent was not debarred from filing opposition based on marks which have been revoked as the effective date was after the date of filing of the marks in suit.

Summary

The marks in suit were applied for on 26 February 2004. The oppositions under Section 5(2)(b) was filed on 29 March 2006 and in each case the opponent relied upon two marks which had been revoked, following applications by this applicant, with the effective dated being 5 March 2004.

In these oppositions the opponent was required by Rule 13(2)(e) to provide a statement of use in respect of the two marks on which it based its opposition. The opponent did so in vague terms with the result that the applicant did not dispute the use claimed in its counterstatement. Following correspondence it requested to be allowed to amend the counterstatement to make clear that it put the opponent to proof of use. The opponent objected.

After hearing the parties the Registrar decided that the opponent had not properly made a claim to use of its marks and it was allowed a period to amend its Opposition Form TM7. If the amended form was filed then the applicant would be allowed a period to amend its From TM8 and counterstatement. There was thus no need to consider amendment of these latter documents at this stage.

Full decision O/088/07 46Kb