Trade mark decision

BL Number

O/182/08

Decision date

1 July 2008

Hearing Officer

Mrs A Corbett

Mark

SECURECODE

Classes

09, 38

Applicant for Invalidation

Mastercard International Incorporated

Registered Proprietor

Richard Gerald Enston

Invalidation

Section 47(1) & (2) based on Sections 3(6) & 5(3)

Result

Section 47(1) based on Section 3(6): Invalidation successful. Section 47(2) based on Section 5(3): Invalidation successful.

Points Of Interest

• None

Summary

The applicant for invalidation owns a registration for the mark MASTERCARD SECURE CODE in Classes 9, 36 and 42 and a Community Trade Mark Application for the mark SECURE CODE in Class 35. In relation to the Section 3(6) ground the applicant claimed the proprietor had sought registration for the purpose of selling it at an inflated cost to legitimate trade mark users. The registered proprietor denied the applicant’s claims.

The applicant filed evidence and the proprietor objected to the admittance of some of it. Following an interlocutory hearing the Hearing Officer allowed all the evidence into the proceedings. The proprietor filed evidence but not in proper format and it was returned to him. The evidence was not re-filed and subsequently the registered proprietor filed form TM 22 and sought to surrender the registration and indicated that no evidence would be filed. The applicant, however, indicated that it wished the proceedings to continue.

As the proprietor did not defend the registration or dispute the contents of the applicant’s evidence the Hearing Officer accepted its claim that (a) the proprietor had registered the mark in suit with no intention to use and had endeavoured to sell the registration to the applicant at an inflated price and (b) that the applicant had used its registered mark and had a reputation in it. The Hearing Officer decided that the application for invalidation was successful in full and awarded costs to the proprietor.

Full decision O/182/08 25Kb