Trade mark decision

BL Number
Decision date
13 July 2001
Hearing Officer
Mr M Reynolds
Registered Proprietor
Anglia Woodnet Ltd
Applicant for Invalidity
Coal Products Ltd
Sections 47(1) & (2) based on Sections 3(1)(b), 3(1)(c), 3(6) & 5(4)(a)


Section 47(1) based on Sections 3(1)(b) & (c) & 3(6): - Invalidity action failed.

Section 47(2) based on Section 5(4)(a): - Invalidity action failed.

Points Of Interest

  • None


The applicants reason for requesting Invalidity under Sections 3(1)(b) and (c) was that they themselves had earlier applied for registration of essentially the same mark in respect of similar goods and the Registry had rejected that application on the basis that it was descriptive and non-distinctive for "reliable and effective goods for use in producing fire". The Hearing Officer accepted that the mark had some descriptive characteristics but he thought them a clever allusion to the nature of the goods rather than totally descriptive. The ground under Sections 3(1)(b) and (c) thus failed.

Under Section 3(6) the Hearing Officer concluded that the applicants had not made their case. The applicants were based in Scotland whereas the registered proprietors were based in East Anglia and there was no evidence of any contact between the parties. The ground under Section 3(6) was therefore rejected.

The applicants had commenced to use their SUREFIRE mark in relation to smokeless fuel in 1996 and the Hearing Officer accepted that they had a reputation and goodwill at the relevant date - 10 December 1998 - when the registered proprietors applied to register their mark. Their mark has not yet been put into use. As the registered proprietors specification covers the same and similar goods and the respective marks are essentially the same, the Hearing Officer believed that misrepresentation could occur and therefore the applicants were successful on this ground.

Full decision O/306/01 PDF document22Kb