Trade mark decision

BL Number
Decision date
23 June 2005
Hearing Officer
Mr M Foley
Applicant for Revocation
Warner Brothers Entertainment, Inc
Registered Proprietor
Pedigree Dolls and Toys Limited
Section 46(1)(a) & (b)


Section 46(1)(a) & (b): - Application for revocation successful.

Points Of Interest

  • This case is one of four revocation actions between the parties. An application involving the filing of additional evidence; discovery and striking-out in relation to the Class 16 registration lead to a request for adjournment. Request refused.


The mark in suit was applied for in Class 3 in November 1986 and placed on the Register in January 1989. The application for revocation was filed on 6 February 2003 and claimed that there had been no use of the registered mark during the five year period prior to the date of the application for revocation, and there were no proper reasons for non-use.

The registered proprietor filed evidence to show that some test sampling had been carried out involving children’s cosmetics being included with other goods in the nature of fun packs. No evidence was filed to show that such goods were actually marketed and indeed the registered proprietor did not claim actual use of the mark in suit. In any event the Hearing Officer decided that such preparations as may have been made did not constitute genuine use of the mark in suit.

The registered proprietor essentially depended on having "proper reasons for non-use" to defend the registration. Two reasons were given; first disruption caused by a move to new premises during which records had been destroyed or mislaid and secondly the fact that their supplier, a firm named Remus, had gone into receivership. As to the first reason the Hearing Officer noted that the transfer to new premises had occurred some thirteen years after registration and he did not consider it relevant. As regards the second reason he saw no reason why the goods in question could not have been sourced from other firms as they were not particularly specialised. Application for revocation succeeded with effect from 6 February 2003

Full decision O/172/05 PDF document39Kb