Trade mark decision

BL Number

O/144/98

Decision date

9 July 1998

Hearing officer

Mr M Reynolds

Mark

INDEPENDENCE

Classes

33

Applicant

Randald MacDonald & Joseph William Senior

Opponent

Joseph William Senior

Opposition

Section 3(6)

Result

Section 3(6) - Opposition successful.

Points Of Interest

• 1. Lost Evidence : In the evidence before the Hearing Officer reference was made to an affidavit by Mr Peter Trainer but that affidavit was not included in the papers considered by the Hearing Officer when he made his decision in favour of the opponent. After the Hearing Officer’s decision was issued on 9 July, 1998 the missing Statutory Declaration of Mr Peter Trainer was discovered in the Registry, having been filed on 12 May, 1997. The Registrar decided that he could not re-open the matter and advised the parties that the decision could only be reviewed on appeal. Mr MacDonald appealed to the Appointed Person. In his decision dated 12 January 1999 (O/037/98) the Appointed Person upheld the Hearing Officer’s decision.

Summary

The opponent claimed that he had been trading as an individual from the beginning of 1991 and had used the mark INDEPENDENCE since that date in relation to whisky products. In 1995 he met Mr MacDonald (the other co-applicant) and they decided to go into business together. The Independence Whisky Company Limited was formed on 25 April, 1995 with each director holding 50% of the Company. Mr Senior claimed not to have been aware that the application had been made in joint names on 23 April, 1995 until October, 1996. The business relationship between Mr Senior and Mr MacDonald ended in April, 1996 and Mr Senior stated that he had continued to trade under the INDEPENDENCE name since that date.

Mr MacDonald disputed some of the facts put forward by Mr Senior. In particular he referred to meetings involving a Mr Peter Trainer who was instructed to form the new company and apply for registration of a redesigned INDEPENDENCE label mark. As the company had not yet been formed it had been necessary to file the application for registration in joint names.

The Hearing Officer noted that while there was a dispute about events surrounding the formation of the new Company and the application for the trade mark, it was clear that Mr Senior had been using the mark prior to his involvement with Mr MacDonald. In the absence, therefore, of express agreement from Mr Senior that he was agreeable to the application being made in joint names, the Hearing Officer decided that the application must be considered as having been filed in bad faith. The application was therefore refused.