Trade mark decision

BL Number: O/110/05
Decision date: 26 April 2005
Hearing Officer: Mrs A Corbett
Mark: DONNETTE
Classes: 30, 42
Applicant for Revocation: Panrico S.A.
Registered Proprietor: Kevin Thomas Rogers
Opposition: Section 46(1)(b). Interlocutory Hearing to consider whether the registered proprietor should be allowed to remain a party to the proceedings.

Result

Request to remain a party to the proceedings: - Request refused.

Points Of Interest

1. None

Summary

The registration of the mark in suit was completed on 16 July 1999. On 27 October 2004 Panrico SA filed an application to revoke the registration. Subsequently, a copy of the application was sent to the recorded address for service of the registered proprietor Messrs Gill Jennings & Every on 1 November 2004.

Later, on 22 December 2004, Marks & Clark filed a Form TM33 notifying the Registrar that they had been appointed as the address for service in respect of registration 2114720 (the mark in suit).

However, no Form TM8, counterstatement or evidence of use were filed to defend the registration and the Registrar wrote to Marks & Clerk on 10 February 2005 to say that it was minded to treat the application as unopposed.

Marks & Clark wrote to the Registrar to say that the revocation papers had been correctly served at the recorded address for service but thereafter they had been lost and could not be found. They also stated that the registered proprietor was in fact using his mark in relation to donuts in the United Kingdom and wished to defend the registration. An interlocutory hearing was requested.

The Hearing Officer heard the parties and decided that the revocation papers had been correctly sent to the recorded address for service. No Form TM8, counterstatement or evidence of use had been filed by the registered proprietor within the time allowed and the onus was on him to do so. The failure of the registered proprietor stemmed from the fact that he had failed to maintain an up-to-date address for service on the Register and he must therefore suffer the consequences. In all the circumstances the Registrar was unable to exercise his discretion to assist the registered proprietor and the mark would be revoked with effect from 16 July 2004.

Full decision O/110/05 36Kb