Trade mark decision

BL Number

O/388/99

Decision date

3 November 1999

Hearing Officer

Mr M Reynolds

Mark

VOICE PERSONALS

Classes

38, 42

Registered Proprietor

Tele-Publishing UK Ltd

Applicants for Revocation & Invalidity

Advanced Telecom Services Inc

Applicants for Invalidity

Audiotex Solutions Ltd.

Result

Section 47(1) - Revocation allowed.

Section 3(1)(a)(b)(c)(d) - Mark held to be generic/descriptive

Section 3(6) - Not successful.

Section 46(1)(c) - Not considered.

Points Of Interest

• 1. These head notes relate to REV 9350. Decision also contains a short decision re related proceedings under Invalidity No. 9355.

Summary

The essence of the applicants case was that the mark is a generic term used in the trade and was so prior to the date of registration which was 7 December 1995. The registered proprietors disputed this claim and both parties filed extensive evidence, including trade evidence, to support their particular viewpoint. The Hearing Officer concluded from the evidence that the term VOICE PERSONALS was first used in the USA about 1989 and knowledge of the term was likely in the USA by 1992/3. A brochure printed in June 1995 used the term in a generic descriptive way. The evidence also showed that when the registered proprietors first used this term in the USA on 1 June 1995 such use was of a generic/descriptive nature. The Hearing Officer thus decided that the application for invalidity succeeded under Section 3(1). Additionally the Hearing Officer concluded that there was insufficient evidence to show that the mark at issue had acquired a distinctive character after registration.

In relation to Section 3(6) the Hearing Officer expressed surprise that the registered proprietors sought a monopoly of the term VOICE PERSONALS given their US background and a claim that they had undertaken an extensive study of the USA market. However, insufficient evidence to justify a finding of "bad faith".

Full decision O/388/99 45Kb