Trade mark decision

BL Number
O/447/02
Decision date
5 November 2002
Hearing Officer
Mr M Reynolds
Mark
LI-LO
Classes
28
Registered Proprietor
Richard Henry Maskell
Applicants for Revocation
Disney Enterprises Inc
Applicant for Revocation
Section 46(1)(a)

Result

Section 46(1)(a): - Application for revocation partially successful

Points Of Interest

  • 1. Use in a form other than as registered : Section 46(2).
  • 2. Discretion.

Summary

The evidence of use filed by the proprietor showed use by the firm Li-Lo Leisure Products Ltd, a company of which he was a director. The Hearing Officer responding to submissions querying the history of the proprietorship of the registration, ruled that such matters were for determination under Sections 47 or 64. In the absence of a formal challenge under those provisions, the registered proprietor was entitled to be regarded as proprietor for the purposes of the Act, and the registration to be regarded as valid. The use shown, therefore, was by the proprietor or with his consent.

The use of the mark, even in the form shown, was considered to be use of the mark as registered; it was not necessary for the proprietor to plead reliance on Section 46(2) since that sub-section was "explanatory or clarificatory in nature" and did not operate as a separate or alternative ground.

Having reviewed the evidence and the submissions relating to it the Hearing Officer came to the view that there had been genuine use of the mark in relation to some of the goods in the specification ("sporting articles (except clothing) in Class 28"). However, he could see no justification for preserving that specification in its entirety and he ruled this should be reduced to "sports balls, apparatus for use in cricket, tennis and croquet and skateboards".

The Hearing Officer went on to consider the matter of residual discretion, which was raised in the skeleton argument. In this, however, he found that no issue of discretion arose, either in the pleadings or on the facts and hence no decision by the tribunal or reference to the ECJ was called for.

Full decision O/447/02 PDF document38Kb