Trade mark decision

BL Number
O/090/05
Decision date
7 April 2005
Hearing Officer
Mr D Landau
Mark
HANG-TEN
Classes
25
Applicant for Revocation
Lancaster Industries LLC
Registered Proprietor
Hang Ten International
Revocation
Section 46(1)(b)

Result

Section 46(1)(b): - Revocation action successful.

Points Of Interest

  • 1. Chain of consent to use of the marks in suit.
  • 2. A determination that sweat-shirts and T-shirts do not fall within the definition of "shirts".

Summary

The two marks in suit cover a range of clothing in Class 25 but by the time of the hearing the proprietor (HTI) had restricted its defence of the registrations to "shirts and shorts".

The registered proprietor Hang Ten International (HTI) is an American Company. With the consent of HTI another associated corporation HTIL entered into a marketing agreement with an English company Copperstore Limited in 1998 to market items of clothing in the UK. The relationship failed and the agreement was terminated on 1 January 2001.

A new licensee Mantavogue Limited was appointed. Evidence of use of the marks in suit comes from former directors of Copperstore Limited and there is no evidence of any sales by Mantavogue Ltd.

It would appear that when Copperstore was appointed it established a separate company HWA International Ltd (HWA) to market HTI’s goods and it would appear that during the period to the termination of the licence goods to the value of £25,000 were marketed. These consisted of T-shirts, sweatshirts and shorts. The Hearing Officer considered carefully the chain of consent to use the marks in suit and concluded that any use by HWA was unauthorised because no authorisation had been given to that company by HTI even though HTI was likely to have been aware that Copperstore had set up a separate marketing company.

There was some evidence of use of the HANG-TEN mark by Copperstore but this appeared to relate mainly to sweat-shirts and T-shirts (which the Hearing Officer determined did not fall within the definition of "shirts"). There was also the purchase of two pairs of shorts from the manufacturer, by a director of Copperstore Mr R J Higgins, at the time of delivery of goods to Copperstore. Evidence of this transaction was filed late and accepted into the proceedings by the Hearing Officer. In the event it did not assist the registered proprietor.

The Hearing Officer considered the chain of consent and claims to use of the marks in suit in exhaustive detail and concluded that use by HWA did not assist the registered proprietor. Also that there had been no genuine use of the marks in suit during the relevant period and there were no proper reasons for non-use in the case of mark (No 900404) and that the application for revocation should succeed

Full decision O/090/05 PDF document89Kb