Trade mark decision

BL Number: O/214/03
Decision date: 29 July 2003
Hearing Officer: Mr A James
Mark: RIVERIA
Classes: 30
Applicant for Invalidation: Stella Products Ltd
Registered Proprietor: Domenico Tanzarella t/a Franco’s Ices
Invalidation: Section 47 based on Section 5(2)(b)

Result

Section 47 based on Section 5(2)(b): - Application for Invalidity successful.

Points Of Interest

See also BL O/104/03

Summary

For a full summary of revocation proceedings between these parties seeBL O/104/03 dated 15 April 2003.

The registered proprietor’s mark was registered as from 22 March 2000. They applied to revoke Stella’s mark on 21 May 2001 and in BL O/104/03 the Hearing Officer decided that it should be revoked with effect from that date. In this earlier decision he also decided that, setting aside the revocation decision, Stella was successful in their request for invalidation under Section 5(2)(b) of the Act since identical goods were at issue and the respective marks were confusingly similar. The Hearing Officer expressed the preliminary view that he was minded to consider that the ground for invalidation had disappeared because Domenico had been successful in their request for revocation of Stella’s mark. However, he asked for submissions from the parties.

In relation to the invalidation proceedings the Hearing Officer noted that the relevant date was the date of application of the registered mark which was 22 March 2000 and that the applicant’s mark had been revoked with effect from 21 May 2001. Having considered the submissions and the terms of Section 46 and 47 the Hearing Officer concluded that Stella’s mark was valid when the proprietors applied to register their mark on 22 March 2000 and that they were successful in their request for invalidation. In so deciding the Hearing Officer distinguished two earlier cases TRANSPAY and SUNDIP (references below) and stated that if parties wished to clear a path for their own mark they must make sure that the relevant date was prior to any application to register their own mark.

Full decision O/214/03 21Kb