Trade mark decision

BL Number

O/215/03

Decision date

16 July 2003

Appointed Person

Professor Ruth Annand

Mark

EBC

Classes

01, 07, 09, 12

Applicant/Appellant

Andrew Charles Freeman

Opponents/Respondents

European Battery Company Limited

Opposition

Appeal to the Appointed Person against the decision of the Registrar’s Hearing Officer in Opposition Proceedings

Result

Section 5(4)(a) - Appeal unsuccessful.

Points Of Interest

• 1. Misrepresentation; separate consideration required even where goodwill is established and marks and goods are the same.

Summary

At first instance (see BL O/403/02) the Hearing Officer had found the opponents unsuccessful under all absolute grounds but partially successful under Section 5(4)(a). The applicant appealed against the latter finding.

It was submitted that the Hearing Officer had erred in not giving separate consideration to the question of misrepresentation, but had stated that "misrepresentation and damage must follow the confirmation of goodwill". Counsel for the applicant contended that whilst these may follow where goodwill is established and the mark and goods are the same, it is not always the case. This wrong assumption had led the Hearing Officer to ignore the applicant’s previous registration of the mark and his use thereof.

The Appointed Person agreed that the Hearing Officer had erred, and a re-hearing, rather than review was appropriate on that aspect. A review of the Hearing officer’s decision on the other aspects of the Section 5(4)(a) objection confirmed its rightness. A reconsideration of the misrepresentation finding showed, however, that the applicant had not discharged the burden of rebutting the prima facie case, and the original finding was therefore confirmed. The Appointed Person confessed a difficulty in determining the case but finally dismissed the appeal.

Full decision O/215/03 29Kb