Trade mark decision

BL Number
Decision date
17 December 2003
Hearing Officer
Dr W J Trott
Ferdinand International Marketing Limited
XTB Limited
Consolidated Cross Oppositions
Sections 3(6) & 5(4)(a)


Section 5(4)(a) - XTB’s opposition successful.

Points Of Interest

  • 1. Date of application; priority to be determined by date, not hour of filing.
  • 2. Estoppel in pais; must be pleaded if raised.


Rival applications for registration of the mark were filed on the same day. The matter was therefore essentially a dispute over the ownership of the common law rights in the mark and, in the rival allegations, the bad faith shown by the other side. The matter of estoppel was also raised.

In a preliminary matter an attempt by one party to claim priority for their application over that of the other by reason of the fact that theirs was filed some hours earlier was dismissed by the Hearing Officer. The 'date' of application was the significant factor, he ruled, not the time on that date.

Turning to the substantive issues the Hearing Officer dealt first with the matter under Section 5(4)(a). A detailed examination of the evidence persuaded him that XTB were the true owners of the mark. They therefore succeeded in their opposition to FIM’s application and their defence of their own application.

The Hearing Officer found no basis for the allegations of bad faith by either party.

Finally, the Hearing Officer rejected the claim of estoppel in pais; this issue could not have been argued without an amendment of the pleadings, it being a legal point of such importance as to be determinative of the outcome of the case. In any event, he found, it was not tenable.

Full decision O/407/03 PDF document107Kb