Trade mark decision

BL Number
Decision date
6 August 2004
Hearing Officer
Mr G Attfield
Applicant for Invalidity
DCI (Europe) Limited
Registered Proprietor
Proactive Ahead Limited
Sections 47(2)(b) & 5(4)(a)


Sections 47(2)(b) & 5(4)(a): - Invalidity action failed.

Points Of Interest

  • 1. Even if a registration is not defended, the applicant must establish a prima facie case that an application for invalidity should be granted.


The applicant for invalidity, DCI, claimed that it was a specialist software provider to the telecommunications industry; that it had used the mark CAREPHONE from 1997 onwards and had acquired a substantial reputation and goodwill in it and that major customers included T-Mobile, Sony and O2.

A copy of the application was sent to the registered proprietor but there was no response and no counterstatement was filed to defend the registration. DCI was, therefore invited to file evidence to support the claims made and establish a prima facie case.

DCI filed a witness statement by Roger Frye, a director. Mr Frye detailed the history of DCI, its setting up in 1996 and the acquisition of the CAREPHONE system. Turnover in relation to the CAREPHONE system was stated as £170k in 1998, £443k in 1999 and £633k in 2000. Mr Frye claimed that the CAREPHONE system has a high profile and major clients in the telecommunications industry. Exhibits filed related to the acquisition of the CAREPHONE system; a review of the system and details about installation of the CAREPHONE system, including a price list.

The Hearing Officer examined the evidence carefully but was concerned as to the lack of detail supporting the claims made. There was no evidence as to customers; no invoices and no evidence of DCI providing a telecommunications service direct to the public or business user. In all the circumstances the Hearing Officer concluded that DCI had not established that it had a reputation and goodwill in the mark CAREPHONE at the relevant date and dismissed the application for invalidation.

Full decision O/234/04 PDF document27Kb