Trade mark decision

BL Number
O/106/08
Decision date
11 April 2008
Hearing Officer
Ms L Adams
Mark
GADGETSHOP
Classes
08
Applicant
G P & C A Grant
Opponent
Iwantoneofthose.Com Ltd.
Opposition
Interlocutory Hearing in relation to an error in Form TM 7, Notice of Opposition

Result

Error in Form TM7: Registrar’s discretion utilised to amend Form TM7 to clarify name of opponent.

Points Of Interest

  • As described

Summary

When completing the notice of opposition Form TM 7 the opponent included both his own name and the name of his company in the space provided for the name and address of the opponent. Following telephone contact from the applicant the Registry spoke to Mr Booth and he indicated that his personal name was included for contact purposes and that the opponent was his company IWANTONEOFTHOSE.COM Ltd. The applicant was advised and form TM8 and Counterstatement was filed within the time allowed.

Subsequently the applicant raised a query about the inclusion of two names in the box provided for the name of the opponent on the Form TM7. It submitted that the opponent had not been properly identified and, therefore, the opposition was not valid and should be set aside. Following further correspondence and submissions at an interlocutory hearing the Hearing Officer advised the parties that in her view the removal of Mr Booth’s personal name from box 3 of the Form TM7 did not constitute a substitution of opponent but merely clarified the name of the opponent to the mark in suit. The applicant asked a statement of the reasons for the decision.

The Hearing Officer refers in some detail to the background to the dispute and considered the matter in the light of comments made by Pumfrey J in the FRISKIES Case [2000] RPC 536 as to the scope of the Registrar’s discretion. In the Hearing Officer’s view there has been no substitution of opponent in these proceedings and by exercising the Registrar’s discretion to strike out the name J Booth from box 3 of the Form TM7 she thus clarified that the name of the opponent is in fact IWANTONEOFTHOSE.COM Ltd. In the circumstances of this dispute the Hearing Officer decided that both parties should bear their own costs.

Full decision O/106/08 PDF document43Kb