Trade mark decision

BL Number
Decision date
5 June 2001
Hearing Officer
Mr M Reynolds
30, 42
Registered Proprietor
William Frederick Webb
Applicants for declaration of Invalidity and for Rectification of the Register
Coffee Time Donuts Inc
Application for Invalidation and or Rectification
Sections 47(1); 3 (6) & Section 60(1)


Application for declaration of invalidity Section 47(1) - Successful

Application for rectification of the Register Section 60 - Failed

Points Of Interest

  • 1. 'Bad faith' in context of preliminary negotiations.
  • 2. Position of foreign trade mark owner under Section 60, where negotiations proved abortive.


The action for invalidation was founded in the applicants' allegation that the registration was applied for in bad faith. The evidence was deficient and unsatisfactory in a number of ways (was there a 'joint venture' or an incipient 'franchise' arrangement?), but clearly a business relationship had been envisaged. In the course of the discussions (or negotiations) the registered proprietor had applied for the mark without the knowledge or permission of Canadian owners of the mark in Canada. The Hearing Officer concluded that this amounted to ‘bad faith’ and the applicants succeeded under Section 47(1).

Under Section 60 the applicants sought to have the register rectified by the substitution of their own name in place of the registered proprietor’s, claiming (i) the registered proprietor should be regarded as their agent or representative; (ii) the Act should be read to cover "putative, or purported or potential agents" (otherwise foreign trade mark owners would have less protection where negotiations had been abortive than where they had been successful); or (iii) the provisions should cover 'fiduciary relationships' arising in the context of negotiations. For various reasons, but principally the absence of a settled business relationship, and doubts about the position of joint venture partners or franchisees in the context of Section 60, the Hearing Officer declined to rectify the Register.

Full decision O/245/01 PDF document45Kb