Trade mark decision

BL Number

O/286/98

Decision date

27 April 1998

Hearing officer

Mr M Knight

Mark

WORTH

Classes

25

Applicant for Revocation

Worth BV

Registered Proprietor

Sidney Massin

Revocation

Section 46(1)(a) & (b)

Result

Section 46(1)(a) & (b) - Revocation failed.

Points Of Interest

• The Hearing Officer observed that the registered proprietor must be allowed a reasonable period of time to put his marks into use. If the applicants filed a further application within a short period it might be considered vexatious.

Summary

The applicants for revocation had earlier made an application under the Trade Marks Act 1938 (as amended) to rectify the register by the removal of the marks in suit on the grounds of non-use. That application had been filed in 1993 and covered the five year period back to 1988. In his decision dated 31 July 1996 the Assistant Registrar found that there had been some genuine use of the marks at issue here and rejected the application. The applicants for revocation filed a fresh application on 2 September 1996 in respect of the five year period following registration and the five year period back to 1991.

Both parties filed evidence in these proceedings which had been filed in the earlier proceedings. The Hearing Officer noted that no evidence of use had been claimed for the five year period following registration but that as stated in the earlier decision by the Assistant Registrar there had subsequently been use. However, there had been no use in the more recent period back to 1991 and he had to consider whether there were proper reason for non-use.

In the evidence there was reference to attempts by the registered proprietor to appoint a licensee and negotiations appeared to be on-going. However, these had been effectively suspended following the launching of the rectification proceedings by the applicants in 1993 and as the current revocation proceedings had been launched within a month or so of the Assistant Registrar’s decision, the registered proprietor claimed that he had been given no opportunity to complete negotiations and appoint a licensee.

The Hearing Officer decided that on-going legal proceedings involving the validity of the registrations in suit were "proper reasons for non use" in the context of Section 46 of the Act.

At this time the Registrar considered that he had a discretion under Section 46 and he exercised it in favour of the registered proprietor.