Trade mark decision

BL Number
O/560/01
Decision date
12 December 2001
Hearing Officer
Mr M Reynolds
Mark
LEX
Classes
35, 41
Applicant for Revocation and Invalidity
Lex Service Plc
Registered Proprietor
Skoda As
Revocation
Section 46(1)(d)

Result

Section 46(1)(d) - Revocation failed

Sections 47(2), 5(2) & 5(3) - Invalidity successful

Sections 47(2) & 3(6) - Invalidity failed

Points Of Interest

  • 1. "Without due cause" a useful commentary on the meaning of this term in the context of Section 5(3).

Summary

The applicants owned a large number of registrations for the mark LEX in the UK and, in particular, had registrations in Classes 12, 37 and 39 which, inter alia, related to the sale of motor vehicles; repair of motor vehicles and the rental and leasing of motor vehicles. They filed evidence of use of the mark from 1928 onwards showing that at the relevant date, January 1997, they had a significant reputation in relation to these goods and services. The registered proprietors said their mark LEX was devised and adopted in 1993 and that it had been used in Germany. No evidence was filed to substantiate use in the UK.

Under Section 5(2) the Hearing Officer compared the services within the registered proprietors registrations with the goods and services covered by the applicants prior registered marks. He concluded that there was only a slight overlap in relation to management services in Class 35 and that the applicants were therefore successful to that limited extent.

Under Section 5(3) the Hearing Officer noted that the respective marks were identical and that the applicants had shown that they had an extensive reputation in the UK. He thus concluded that use of the mark LEX by the registered proprietors would take unfair advantage and be detrimental to the distinctive character and repute of the applicants mark.

The ground under Section 3(6) failed because the evidence did not establish that the registered proprietors were aware of the applicants mark when they filed their application. The ground under Section 46(1)(d) also failed because there was, in fact, no evidence that the registered proprietors had used their mark in the UK and thus the public could not have been misled.

Full decision O/560/01 PDF document31Kb