Trade mark decision

BL Number
Decision date
20 September 2006
Hearing Officer
Mr M Foley
Hollaender Manufacturing Co
Hollaender Rainer Limited
Sections 5(2)(b) & 5(4)(a)


Section 5(2)(b): Opposition successful. Section 5(4)(a): Not decided.

Points Of Interest

  • Highlights the lack of impact of “honest concurrent use” under the 1994 Act.


The opponent is the owner of the mark HOLLAENDER RAINER which is registered in Class 6 in respect of the same and similar goods as those of the applicant.

By way of background it would appear that the applicant, an American Manufacturing Company, first appointed agents in the UK in or about 1983 and that it made contact with, an appointed Mark Reiner (Structural) Ltd as distributor in 1984. Such goods were apparently sold under the mark HOLLAENDER RAINER but it is not clear from the evidence whether the UK company adopted the name itself or in cooperation with the American Company. The US Company provided goods for sale in the UK up until 1992 when it terminated the distributorship. The American Company subsequently appointed new distributors and have continued to provide goods for sales in the UK under the mark HOLLAENDER. The UK company continued to trade under the HOLLAENDER RAINER mark and sourced its goods from other suppliers.

Under Section 5(2)(b) the Hearing Officer observed that the evidence from both parties was not well focused and he was unable to conclude that the applicant had approved the use of, or exercised any control over the use of the HOLLAENDER name in the UK. He therefore accepted, for the purposes of this dispute that the opponent owned the mark HOLLAENDER RAINER in the UK and that he must consider the conflict on that basis. In reaching his decision the Hearing Officer noted that there had been concurrent trade under the respective marks for some ten years and no evidence as regards confusion of customers had been filed by the opponent. In this case identical goods are at issue and the respective marks are confusingly similar and the Hearing Officer found there was the likelihood of confusion. Opposition thus succeeded on this ground.

The Hearing Officer did not decide the proceedings under Section 5(4)(a) but indicated that if he had done so, he would have found in favour of the opponent.

Full decision O/266/06 PDF document135Kb