Trade mark decision

BL Number
Decision date
18 June 2003
Hearing Officer
Mr D Landau
Registered Proprietor
R Mahtani
Applicant for Revocation
De Rigo SPA
Application for Revocation
Section 46(1)(a)


Application for revocation, Section 46(1)(a), successful.

Points Of Interest

  • 1. Use on samples in marketing campaign.
  • 2. 'Genuine' use v 'bona fide' use.
  • 3. License agreement not use but 'a preparation for use'.


At a preliminary hearing (see BL O/131/02) the Hearing Officer had accepted that the registered proprietor’s evidence of use was sufficient to represent a defence of the registration (if only just) and had allowed the filing of further evidence. The totality of this evidence, however, did not persuade the Hearing Officer that there had been genuine use of the mark. Had it been a matter of showing ‘bona fide’ use under the old Act (Trade Marks Act 1938) however, the registration would have been safe, as the use satisfied the principles set out in Gerber Foods International Ltd v Gerber Products Company ([2002] EWCA Civ 1888).

In case he should be wrong in this, however, the Hearing Officer went on to consider what part of the specification of goods should survive were it to be found that there had been use. In that event, he ruled, the specification should be reduced to "eau de toilette, deodorants for men and shampoo".

In a supplementary decision under Section 46(6), dated 19th June 2003, the Hearing Officer ruled that the registration should be revoked from 15th December 2000.

Full decision O/165/03 PDF document61Kb