Trade mark decision

BL Number
Decision date
20 April 1998
Hearing Officer
Mr M Reynolds
Registered Proprietors
Norton Motorcycles Ltd
Applicant for Revocation
Regal Engineering Co Ltd
Section 46(1)(b)


Section 46(1)(b) - Revocation allowed

Points Of Interest

  • Discretion : In later cases it was decided that the Registrar had no discretion to exercise in revocation proceedings under the 1994 Act. See ZIPPO Trade Mark [1999] RPC 173.


The application for revocation was filed on 23 October 1996 and related to non-use during the period 1991-1996.

The registered proprietors’ predecessor in title had granted a non-exclusive licence in respect of the mark in suit to BSA Company Ltd. This licence was varied in 1987 restricting the engine size of motor cycles to 175cc. BSA was acquired by the applicants for revocation in 1994 and following nugatory discussions with the registered proprietors, filed their application for revocation.

The registered proprietors claimed use of the mark in suit during the relevant period but that evidence which included alleged purchase orders was challenged by the applicants and their claims were not rebutted by the registered proprietors. In any event this evidence was unclear as regards the mark at issue here, and was not placed in context. A press article also filed was outside the relevant date. The Hearing Officer decided that there had been no genuine use during the relevant period.

The registered proprietors also claimed that preparations had been made to put the mark into use. However, the evidence filed about negotiations was sketchy and the Hearing Officer was unconvinced that it reflected serious efforts to put the mark into use. In some instances the proposals related to the North American market rather than the UK. This defence therefore failed.

No evidence was filed to support the claim that there were proper reasons for non-use.

The Hearing Officer also considered the question of the Registrar’s discretion with particular emphasis on the fact that the applicants for revocation had been licensed to use the mark in suit. However, the Hearing Officer noted that the licence to BSA was non-exclusive; it had been restricted to motor cycle engine size and the new owners of BSA (the applicants) had attempted to negotiate a settlement with the registered proprietors. It was only when these failed that the application was filed. In all the circumstances the Hearing Officer decided that no exercise of the Registrar's discretion in support of the registered proprietors was merited.