Trade mark decision

BL Number

O/112/07

Decision date

23 April 2007

Hearing Officer

Mr M Foley

Mark

FAMOS

Classes

30

Applicant for Invalidity

Arcadia Food Industries Limited

Registered Proprietor

Sahdat Raja

Invalidity

Sections 47(1) & 47(2)(b) based on Sections 3(6) and 5(4)(a)

Result

Section 47(1) & Section 3(6): Application successful. Section 47(2)(b) & Section 5(4)(a): Application successful.

Points Of Interest

• None

Summary

The applicant for invalidation (Arcadia) states that the company was purchased in 1986 including the trade mark FAMOS and the goodwill of the business. Due to an oversight the Register of Trade Marks was not updated and the registration expired due to non-payment of the renewal fee. The mark in suit was subsequently registered by the current proprietor and the applicant states that the current registered proprietor was aware of his company’s use and ownership of the mark FAMOS when he applied to register it.

Arcadia has filed extensive evidence in these proceedings from its own records and from other traders which establishes that it has used its FAMOS mark for many years in relation to flour and preparations made from cereals and spices and has an extensive reputation in its mark. The Hearing Officer had no difficulty in concluding that Arcadia was successful in its ground of invalidation under Section 47(2)(b) and 5(4)(a).

In relation to the bad faith ground, Section 3(6), the Hearing Officer found that the current registered proprietor was aware that he was not the owner of the mark FAMOS when he applied to register it. Having obtained registration he then tried to force the applicant to apply for a licence to use its mark. Subsequently he made various promises to return the mark to the applicant but failed to fulfil those promises. Having considered the matter carefully the Hearing Officer concluded that the applicant was also successful on the “bad faith” ground.

Having been successful in its application, the applicant sought costs above the normal scale but the Hearing Officer refused this request.

Full decision O/112/07 99Kb