Trade mark decision

BL Number
Decision date
14 March 2002
Hearing Officer
Mr D Landau
Registered Proprietor
El Torito Restaurants Inc
Applicants for Revocation
Centralize Limited
Application for Revocation
Section 46(1)(a)


Application for revocation, Section 46(1)(a) - Successful.

Points Of Interest

  • 1. Internet use
  • 2. Use per Section 10(4)(d)


A preliminary point relating to disclosure eventually established that it was a ‘request’ not an application for an order. The Hearing Officer treated it as a request and awarded costs to the registered proprietor as compensation for the small additional expense involved.

The registered proprietor’s case was that there had been genuine use (Internet use and correspondence relating to franchising) or at least proper reasons for non-use. Section 10(4)(d) was cited as part of this defence, but the Hearing Officer considered that such use must still be in relation to the goods or services in the UK. No restaurant had been opened in the UK, internet hits gave no information of the circumstances or the results; in short no genuine use had been shown.

The ‘proper reasons’ cited as the second leg of the defence related to the difficulties encountered in getting the franchises off the ground. The Hearing Officer, however, decided that these were “normal situations or routine difficulties” (per INVERMONT [1997] RPC 125) and found no ‘proper reasons’ in them.

Finally, he rejected the submission that he had a discretion to preserve the registration; in any case, no grounds for an exercise of discretion could be found in the evidence.

Full decision O/119/02 PDF document62Kb