Trade mark decision

BL Number: O/212/98
Decision date: 27 October 1998
Hearing Officer: Mr G Salthouse
Mark: ACR MODIFIED WORKS TEAM SPEC 5.0
Classes: 07
Applicant for Declaration of Invalidity: Andrew J Griffiths
Registered Proprietor: Clifford Gwyn Evans
Invalidity: Section 47(1) & Sections 1(1), 3(1)(a), (b) & (d), 5(4)(a) & 3(6)

Result

Sections 1(1) & 3(1) - Revocation failed

Section 5(4)(a) - Revocation succeeded

Section 3(6) - Revocation succeeded

Points Of Interest

None

Summary

The applicant filed evidence to show that he had designed a new electric motor in 1992 and sold these motors under an AGR logo. In 1993 he was introduced to Mr Evans (the registered proprietor) and entered into a verbal partnership with him with regard to the sale of the new electric motors. A new version of the AGR mark was designed for use by The Partnership. Following disagreement between the parties the partnership was dissolved but it was made clear by the applicant that he owned the AGR logo and intended to continue trading under it. However, Mr Evans also continued to use the mark until Mr Griffiths obtained a High Court Injunction. The Court action ended when Mr Evans gave an undertaking to cease using the AGR logo on 15 December 1994. The mark at issue here was filed on 1 November, 1994 and was registered as of that date.

Under Section 1(1) and 3(1) the Hearing Officer concluded that the mark was capable of distinguishing and that there was no reason why it would not be seen by the public as a distinctive mark.

With regard to Section 5(4)(a) - Passing Off - the Hearing Officer was satisfied from the evidence filed by the applicant that he had a prior right in the logo AGR and a reputation and goodwill in the mark. He, therefore, found in favour of the applicant. The Hearing Officer also found in favour of the applicant under Section 3(6) since he noted that the application was filed only a few weeks prior to the undertaking given to the Court by Mr Evans not to use the logo AGR.

Full decision O/212/98 36Kb