Trade mark decision

BL Number

O/397/02

Decision date

23 September 2002

Appointed Person

Mr Geoffrey Hobbs KC

Mark

ADRENALIN

Classes

25

Registered Proprietor / Appellant

Nicholas Dynes Gracey

Applicants for Invalidation / Respondents

Hi-Tec Sports UK Ltd

Appeal to the Appointed Person in respect of interlocutory decisions of the Registrar’s Hearing Officer in invalidation proceedings

Result

Appeal dismissed

Points Of Interest

• Costs in proceedings before the Registrar; it is not legitimate to award general damages in the guise of costs.

Summary

The invalidation proceedings had been filed on Form TM 26(I) and had included a statement by the applicant’s Solicitors that no action concerning the registration was pending in the courts. This was not true as the registration in question was the subject of a claim and counterclaim in a High Court action.

The Registry, although warned by the registered proprietor that just such an action was pending in the court, called for a counterstatement. The registered proprietor filed a counterstatement as requested; in his decision the Appointed Person described this, 27 pages plus 19 pages of attachments, as "a document of limited relevance and extravagant length, written and presented in a convoluted manner that made it difficult to understand."

The proprietor, however, did not request a hearing of his contention that the action should be struck out. Instead he asked for disclosure of documents in order to get information he needed for the case proceeding in the High Court. The Registry indicated its unwillingness to comply with this but eventually decided that a hearing should be appointed at which these various matters could be resolved. The facts disclosed at the hearing quickly persuaded the Hearing Officer that the invalidation proceedings should never have been filed with the Registry. He awarded the registered proprietor costs in the sum of £150 in view of the effort and inconvenience to which he had been put, and the action was struck out.

The registered proprietor nevertheless appealed to the Appointed Person; the grounds were set out in a 12 page document. Eventually it emerged that the proprietor was not appealing against the costs order but was instead seeking an award for wasted costs against the applicant’s Solicitors for their wrong statement of the position regarding the High Court action; in effect he was seeking damages. This was not a matter for the Registrar or the Appointed Persona and would have to be pursued elsewhere. Various other matters were dragged into the appeal including a claim under the Human Rights Act 1998.

In the result the Appointed Person dismissed the appeal adding that the registered proprietor's presentation had been "uninformative and unhelpful" to a degree that he was not prepared to ignore. He awarded costs against the proprietor.

Full decision O/397/02 59Kb