Trade mark decision

BL Number: O/197/08
Decision date: 10 July 2008
Hearing Officer: Mr M Reynolds
Mark: efax
Classes: 38
Applicants: J2 Global UK Ltd (previously Efax Ltd)
Opponents: Protus IP Solutions Inc
Opposition: Sections 3(1)(b) & 3(1)(c)

Result

Sections 3(1)(b) & (c): Opposition successful.

Points Of Interest

1. ‘e’ marks.
2. expert evidence; “It is ….. both unnecessary and inappropriate for ‘third party’ attorneys to be invited to file evidence in support of the parties positions as has happened in this case. It amounts in effect to an attempt to instruct the tribunal on the very thing on which it should be expert. Such a practice is to be
discouraged."

Summary

Having reviewed the evidence and the history of this application (commenting in the process on some evidence filed by the opponents, which took the form of ‘expert evidence on the opinions of third party trade mark attorneys) the Hearing Officer concluded that the combinations of ‘e’ and ‘fax’ for an electronic facsimile transmission service was “a wholly natural and obvious descriptive usage” and he went on to find that the mark had not acquired any distinctiveness by reason of the use which had been made of it. The opposition therefore succeeded.

Full decision O/197/08 271Kb