Trade mark decision

BL Number
O/291/02
Decision date
19 July 2002
Hearing Officer
Mr M Reynolds
Mark
KINDER
Classes
30, 32
Registered Proprietors
Ferrero SPA & Soremartec SA
Applicants for Declarations of Invalidity
Soldan Holding & Bonbonspezialitaten GmbH
Invalidations
(five actions consolidated) : Section 47 (Section 3(1)(b), 3(1)(c) & 3(6))* (* other grounds under Section 3 were cited but were not pursued and hence dismissed).

Points Of Interest

  • 1. Bad faith : prima facie case of an absence of bona fide intention to use made out; no satisfactory rebuttal from registered proprietors.

Summary

The Section 3(6) ground was cited against all five registrations and the Hearing Officer dealt with that matter first. The applicants alleged that the marks had been applied for without any bona fide intention that they should be used.

Reviewing the evidence and submissions made relative to this claim the Hearing Officer noted the "sheer number of (KINDER) marks applied for which apparently remain unused and secondly the period of time (at least from the 1980's onwards) over which the applications (were) made". This was characterised by Counsel for the applicants as "a persistent practice". The Hearing Officer held that whilst this could not be determinative of the bad faith claim it did, in his view, establish a prima facie case requiring a response from the proprietors. The registered proprietors had provided no evidence and/or explanation to counter the prima facie position established by the applicants, and the Section 3(6) attack therefore succeeded in each case.

The Hearing Officer went on to consider the applications under Sections 3(1)(b) and 3(1)(c), which were directed at two of the registrations, KINDER SNAPPY and KINDER CUORDIFRUTTA. He could find no basis for the objections to either of these marks and the applications for invalidity failed on those grounds.

Full decision O/291/02 PDF document68Kb