Trade mark decision

BL Number

O/355/04

Decision date

22 November 2004

Appointed Person

Mr Richard Arnold QC

Mark

DEVICE ONLY

Classes

03, 05

Applicant/Appellant

Robert McBride Ltd

Opponent/Respondent

Reckitt Benckiser (UK) Limited

Appeal against the decision of the Registrar’s Hearing officer in Opposition proceedings.

Result

Appeal successful.

Points Of Interest

• 1. Compatibility of Section 32(3) with the Directive.
• 2. Bad faith: "an honest but mistaken statement that the applicant intends to use the mark is not bad faith".

Summary

At first instance (see BL O/105/04) the Hearing Officer had rejected the opposition under Sections 5(2)(b) & 5(4)(a) but had upheld the opposition under Section 3(6), in which it was alleged that the applicant had no intention of using the mark as applied for. The applicant appealed against this latter finding.

Having reviewed the Hearing Officer’s decision and the present state of the law in respect of bad faith (including Harrison v Teton Valley Trading Co Ltd [2004] EWCA Civ, [2004] WLR 2577), a case which had been decided since the issue of the Hearing Officer’s decision), the Appointed Person concluded that it had not been demonstrated that the application was made in bad faith.

The Harrison case made it clear that an honest but mistaken statement that the applicant intended to use the mark was not bad faith.

Whether or not the applicant’s intended manner of use of the mark would constitute use as required by Section 46(2), it was at least arguable. There was no evidence from which it could be properly inferred that the applicant knew that sale of the product would not constitute use of the mark applied for, and had therefore knowingly made a false statement on the TM3.

The appeal succeeded accordingly.

Full decision O/355/04 230Kb