Trade mark decision

BL Number

O/061/98

Decision date

17 March 1998

Hearing officer

Mr A James

Mark

GLYCOSPORT

Classes

32

Applicant

Glycosport Soft Drinks Limited

Opponent

Health Innovations (UK) Ltd

Opposition

Sections 3(6), 5(4)(a) & Section 39

Result

Section 3(6) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Section 39(1) - Application not proceedings to registration.

Points Of Interest

• 1. Assignment: A director is not entitled to agree to an assignment unless authorised by his company to do so.

Summary

This was an unusual case involving three companies, with directors common to all three companies. The applicant’s Health Innovations Ltd were the original company who developed the product - a sports drink - and sold that product under the mark GLYCOSPORT from 1993 onwards. In March 1995 a new company Health Innovations (UK) Ltd was acquired and the two companies exchanged names. Health Innovations Ltd thus became a subsidiary of Health Innovations (UK) Ltd. In May 1995 the application to register GLYCOSPORT was made in the name of Health Innovations Ltd. The Directors of these two companies were Dr Newman and Mr Axelsen. Later in 1995 a new company called Glycosport Soft Drinks Limited was formed to market the GLYCOSPORT product with the Directors being Dr Newman, Mr Axelsen and Mr Percy.

Assignment of the mark GLYCOSPORT to Glycosport Soft Drinks Limited was authorised by Mr Axelsen and filed with the Registry. The assignment was recorded and the mark GLYCOSPORT proceeded to advertisement for opposition purposes in the name of Glycosport Soft Drinks Limited. Subsequently Health Innovations (UK) Ltd filed opposition.

In his evidence Dr Newman, Chairman of Health Innovations (UK) Ltd stated that the assignment of GLYCOSPORT to Glycosport Soft Drinks Ltd had been discussed but no agreement had been reached. Mr Axelsen had not been authorised by Health Innovations (UK) Ltd to agree assignment of the mark or sign the assignment documents.

Dr Newman explained the history of the application and his opposition to registration. Mr Axelsen also filed a declaration to say that his actions had been unauthorised and he had acted under commercial pressure from Mr Percy.

The Hearing Officer accepted the opponents evidence, which was not challenged by the applicants, and held the assignment dated 15 September 1995 to be invalid. However, the grounds under Section 3(6) and 5(4)(a) must be considered in the context of the relevant date and as there was nothing wrong with the application at that date these grounds were not appropriate to deal with the situation which had developed.

Based on the evidence before him, the Hearing Officer concluded that the opponents, not the opponents subsidiary, were the owners of the mark at the time of the application and the application was therefore proceeding in the wrong name. He therefore treated the opponents opposition as a request that its subsidiary’s application should not proceed and the Hearing Officer noted that this was possible under Section 39(1) and agreed to proceed in that fashion.