Trade mark decision

BL Number
Decision date
29 July 2003
Hearing Officer
Mr J MacGillivray
Applicants for Invalidation
Nicholas Andrew Barker, Margaret Gilmour Barker & Hygieco Limited
Registered Proprietor
Barclay-Swann Limited
Section 47(2)(b) based on Section 5(4)(a)


Sections 47(2)(b) & 5(4)(a): - Application for invalidity successful.

Points Of Interest

  • None


The applicants for invalidity filed evidence to establish that they had coined the mark HYGIECO in early 1991 and in that year registered HYGIECO as the name of a limited company. Since that time the name has been used in relation to the provision of vending machines and dispensers for use in washrooms and toilets and the service also includes the provision of paper products and paper towels on a continuing re-fill basis. Turnover figures were provided from 1991 onwards and these showed that by the year 2000 washrooms equipment services amounted to £452k and paper disposables some £46.6k. The applicants also referred to two instances of confusion since the registered proprietors commenced to use their mark in relation to the same and similar paper products.

The registered proprietor claimed that they were not aware of the applicants when they coined the mark HYGIECO and applied to register it on 22 October 1999. They claimed to be in a different field of activity as compared to the applicants and submitted that they have built up a significant reputation in their mark since use commenced in the year 2000. Turnover had expanded to over £600k for the eight months to August 2001 and over £150k had been spent promoting the mark in the years 2000 and 2001.

Under Section 5(4)(a) – Passing Off – the Hearing Officer accepted that the applicants for invalidity had established that they had a reputation and goodwill in the mark HYGIECO at the relevant date. As the marks were identical and the goods were identical or very similar it followed that there was a likelihood of confusion and misrepresentation and damage to the applicants’ mark. The application for invalidation therefore succeeded and the registration would be deemed never to have been made.

Full decision O/212/03 PDF document44Kb