Trade mark decision

BL Number
Decision date
17 September 2007
Hearing Officer
Mr D Landau
37, 42
Applicant for invalidation
Fiks Trading Ltd
Registered Proprietor
Sticks & Stone Limited
Section 47(1) & (2)(a) based on Sections 3(6) & 5(2)(b)


Section 47(1) & Section 3(6): Invalidity failed. Section 47(2)(a): & Section 5(2)(a): Invalidity successful in respect of all services other than ‘project management services’.

Points Of Interest

  • 1. Security of costs requested without good reasons. Request refused.
  • 2. Without prejudice correspondence including in evidence. Ignored by Hearing Officer.


The applicant in these proceedings owns the mark STICKS & STONES in Class 19 in respect of wood flooring and stone flooring. Its mark was applied for on 17th July 2003 and was in fact opposed by the current registered proprietor. That opposition was not pursued and the registration process was completed on the 25th February 2005.

In these proceedings the applicant raised grounds under Section 3(6) on the basis that the registered proprietor knew of it’s registration when it made it’s application and under Section 5(2)(b) on the basis that both parties are in the same area of business. As identical marks are at issue the latter ground should have been under Section 5(2)(a) and the Hearing Officer proceeded on that basis in his decision.

In its evidence the registered proprietor claimed a continuation of a business from 1993 onwards but there was no evidence to back up such claims.

In its evidence the applicant cast doubt on the truthfulness of some of the registered proprietor’s evidence and the Hearing Officer was critical of such claims as there was no evidence to substantiate them.

Under Section 3(6) the Hearing Officer decided that as the registered proprietor had been using its mark in relation to building services for at least a couple of years prior to application and there was nothing in the evidence in these proceedings to show that the applicant traded in wood and stone flooring materials, the ground of bad faith was not proved and therefore failed.

Under Section 5(2)(a) the Hearing Officer had no difficulty in deciding that the building services etc offered by the registered proprietor were very similar to the applicant’s goods and, as identical marks were at issue, confusion of the public was likely. Revocation successful on this ground in respect of all services claimed other than ‘project management services’.

Full decision O/272/07 PDF document124Kb