Trade mark decision

BL Number
O/226/08
Decision date
8 August 2008
Hearing Officer
Mr M Bryant
Mark
e EuroFinance
Classes
16, 35, 41
Applicant
EuroFinance Conferences Limited
Opponent
Nordnet Securities Luxembourg SA
Opposition
Decision concerned the requirement for an address for service in the UK in Opposition Proceedings

Result

Requirement for an address for service in the UK, in inter partes proceedings, maintained.

Points Of Interest

  • See also BL O/177/06

Summary

Opposition to the mark in suit was filed on 28 February 2008. Box 4 of the Form TM7 requires an address or service in the UK but in this case the following details were provided:

“Office Ernest T. Freylinger S.A.

234, route d’Arlon

PO Box 48

L-8001 Strassen

Luxembourg”

The opponent disputed the need for an address for service in the UK and claimed such a requirement was in breach of Articles 43 and 49 et seq of the EC Treaty. It also pointed to a recent European Court of Justice decision in relation to requirements imposed by The Grand Duchy of Luxembourg; other pending cases involving “Germany and Austria and the fact that the Royal Mail offers a very satisfactory delivery service to Luxembourg and other EEA Countries.

Following a hearing conducted by telephone, the Hearing Officer maintained the requirement for an address for service in the UK in all inter partes proceedings before the Registrar. Such a requirement was “reasonable, necessary and proportionate”. Notification of a ‘transmitting Agency’ did not satisfy the requirement.

In reaching his decision the Hearing Officer noted that the recent amendment to Rule 10 in 2006 allowed the Registrar a discretion to accept an address for service outside the UK in a particular case. However, this was not a general discretion and the availability of a satisfactory postal service between two states would only be one matter to take into account and was not persuasive in this case.

The Hearing Officer referred to an earlier decision BL O/177/06 (Galileo International) in reaching his decision in this case.

Full decision O/226/08 PDF document142Kb