Trade mark decision

BL Number
Decision date
19 June 2001
Hearing Officer
Mr A Pike
Paula Grace Consulting & Training Inc
W R Grace & Co-.CONN
Sections 1(1), 3(1)(a), 3(3)(b), 3(6), 5(2), 5(3), 5(4) & 6(1)(c)


Sections 1(1) & 3(1)(b): - Opposition failed.

Section 3(3)(b): - Opposition failed.

Section 3(6): - Opposition failed.

Section 5(2): - Opposition failed.

Section 5(3): - Opposition failed.

Section 5(4): - Opposition failed.

Section 6(1)(c): - Opposition failed.

Points Of Interest

  • None


The opponents own registrations for the mark GRACE and variations thereof in Classes 1, 2, 7, 11, 16, 17, 19, 29, 31 and 37. They claimed to have used the mark GRACE in respect of training services for their own employees and to have sponsored scientific educational fairs, conferences and other events.

The opponents filed no evidence in relation to the grounds under Sections1(1), 3(1)(a), 3(3)(b) and 3(6) so the Hearing Officer dismissed these grounds with minimal consideration.

Under Section 5(2)(b) the Hearing Officer accepted that the respective marks were very close but as the opponents goods and services were very different from the services of the applicant there was no likelihood of confusion.

Under Sections 5(3) and 5(4) the Hearing Officer noted the lack of real use and reputation in the United Kingdom of the opponents’ mark and concluded that the opponents must also fail on these grounds.

The ground under Section 6(1)(c) related to a claim that a Brazil Tribunal had held GRACE to be a well known mark in Brazil under the terms of the Paris Convention. As the evidence filed did not support such a claim as regards the UK the Hearing Officer also rejected this ground.

Full decision O/268/01 PDF document39Kb