Trade mark decision
- BL Number
- O/499/02
- Decision date
- 10 December 2002
- Hearing Officer
- Mr M Foley
- Mark
- GOLD FISCHLI
- Classes
- 30
- Applicant
- Intersnack Knabber-Gebäck GmbH & Co KG
- Opponent
- Kambly SA Spécialitiés De Biscuits Suisses
- Opposition
- Trade Marks Act 1938 (as amended):- Sections 17(1), 68(1), 17(2) & 11
Result
Opposition failed on all grounds.
Points Of Interest
- 1. Community Law : Article 81 of the Treaty : restrictive licensing agreement.
- 2. Copyright in design of mark.
Summary
The opponents were former proprietors of the marks ‘GOLDFISH’ and ‘GOLDFISCHLI’, since revoked for non-use in the UK. The applicants were former licensees under the terms of an agreement between them and the opponents. Since there had been no use of the mark in the UK the Hearing Officer in his consideration of the Section 17(1) ground proceeded on the basis that this was an unused mark.
Although the opponents were the originators of the mark that was many years ago and they had never made use of it in the UK nor shown any evidence relating to any attempts at or preparations for use here. On the bare facts the Hearing Officer could see no reason why the applicants could not reasonably regard the way as clear for them to register it in the UK. After a lengthy examination of the evidence and submissions relative to the Agreement between the parties, said to have expired long ago, the Hearing Officer eventually found that it should be “considered as contrary to Article 81(1) [of the Treaty of Rome] and void under the provisions of Article 81(2)”. In the result therefore the Hearing Officer had found that the applicants could reasonably apply to register the mark, the Agreement provided no barrier and there was no reason to suppose that they did not intend to use it. The grounds under Sections 17(1) and 68(1) failed accordingly.
The first Section 11 objection, based on use, was quickly disposed of; there was no use of the mark on which the opponents could rely.
The second objection under Section 11 concerned the opponents’ claim to copyright in the mark. The Hearing Officer, after comparing the respective marks found that the applicants’ mark was not an infringement.
Finally, he found no reason to justify an exercise of the Registrar’s discretion adverse to the applicants.
Full decision O/499/02 
84Kb
