7 Rolls Buildings
London EC4A 1NL
B e f o r e :
| (1) DYNO HOLDINGS LIMITED
(2) DYNO-ROD LIMITED
|- and -
|(1) DIAL A ROD HOMECOVER LIMITED
(2) PAUL PLUMMER
(3) CHARLOTTE EDNEY
The Second Defendant represented himself
Crown Copyright ©
Judge Birss :
i) relative grounds: s47(2)(a) and (b) / s5(2), s5(3) and s5(4) of the Trade Marks Act 1994;
ii) bad faith: s47 (1) and s3(6) of the 1994 Act;
iii) liable to mislead: s46(1) (d) of the 1994 Act.
i) The mark DIAL A ROD was registered in 2007 in good faith as a way of protecting the name from other companies who were using it. The name has been used in Mr Plummer's family since the 1960s as the trading name for his family's plumbing business.
ii) If the claimants had an issue with the registration of the mark they had an opportunity to object but nothing was done.
iii) The mark has been used since 2007 and, as the second defendant put it "over the 5 years that it can be objected to" the claimants have not brought a case for infringement at any time since that date of registration.
iv) The claimants are holding the second defendant responsible whereas in fact others were responsible including the first and third defendant.
v) Other companies use marks ending with the word "rod" in the plumbing and drainage industry.
vi) Four other companies use the mark DIAL A ROD in the same industry.
vii) In answer to the complaints about the services offered under the DIAL A ROD mark, the second defendant referred to complaints about the claimant's business.
48 Effect of acquiescence.
(1) Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trade mark in the United Kingdom, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark or other right—
(a) to apply for a declaration that the registration of the later trade mark is invalid, or
(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used,
unless the registration of the later trade mark was applied for in bad faith.
i) The second defendant must file at court and serve on the claimants by 4pm on 13th March 2013 a Defence setting out all facts and matters he relies on to establish his case under section 48 of the Trade Marks Act 1994, in particular setting out in detail a complete history of the use of the registered trade mark 2443609 from the date it was applied for until 11th August 2012, explaining who used it, for what periods, in relation to what business(es) and giving a complete history of which individuals or companies held the registered trade mark at any given time in that period and UNLESS the second defendant complies with this order, his defence to this claim will be struck out and judgment entered for the claimants.