Trade mark decision

BL Number
Decision date
1 October 1999
Hearing Officer
Mr G Attfield
16, 22, 25, 35, 41
Applicant for Revocation & Invalidity
Trocadero PLC
Registered Proprietor
Nicholas Dynes Gracey
Revocation & Invalidation in respect of 6 marks
Section 46(1)(a), 46(1)(b) & Section 47 relating to Sections 3(6) & 32(3)


Section 46(1)(a) and 1(b) - Revocation successful

Section 47, 3(6) and 32(3) - Invalidity partially successful

Points Of Interest

  • 1. What constitutes an Affidavit or Statutory Declaration.
  • 2. The registered proprietor appealed this decision to the Appointed Person and asked that it be set aside on the grounds that he had asked to be heard in the matter of these applications for Revocation and Invalidity and the decision had been issued without his request being complied with. In his decision dated 6 December 1999 (SRIS O/440/99) the Appointed Person set aside the Hearing Officer’s decision and remitted the proceedings to the Registry for a hearing to be arranged prior to the issue of any new decision.


The registered proprietor filed a counterstatement in the form of an affidavit (later queried) in which he claimed use of the mark ADRENALIN but such use as was claimed was in vague terms and was interspersed with details of company bankruptcy, failed licencing agreements and disputes with other parties. The applicants claimed there had been no real use of the marks at issue; that the registered proprietor had registered his marks without an intention to use; that he had a history of making multiple applications for marks and not proceeding and that the purported affidavit filed was not an affidavit at all since the solicitor who witnessed the document was not a practising solicitor.

As regards this latter point the registered proprietor stated that all evidence filed by him was in the form of "Statements of Truth" and the witness signature was merely of his own signature. The Hearing Officer refused to accept that such a declaration complied with the requirements of the Trade Marks Act and Rules and thus ruled that the registered proprietor had filed no evidence in the proceedings. However, the Counterstatement could be accepted since it did not need to be witnessed or declared.

In revocation proceedings the onus rests on the registered proprietor to show use of his marks. As no evidence of any use had been filed the Hearing Officer found the applicants successful in respect of the six marks the subject of revocation proceedings. Even taking into account the relevant claims made in the Counterstatement, the Hearing Officer reached the same conclusion. With regard to the application for invalidity the Hearing Officer concluded that there had been no intention to use any of the registered marks in classes other than Class 25 and that even in that class the specifications should be restricted as set out in his decision.

Full decision O/336/99 PDF document73Kb