Trade mark decision

BL Number

O/098/99

Decision date

29 March 1999

Hearing officer

Dr W J Trott

Mark

TENNESSEE FRIED CHICKEN

Classes

42

Registered Proprietor

Hycare Fast Foods Ltd

Applicants for Revocation and Invalidation

Tennessee Fried Chicken (Europe) Ltd

Applications for Revocation and Invalidation

Sections 46(1)(d) & 47(2)(b)

Result

Section 46(1)(d): - Application for revocation failed.

Section 46(1)(d): - Application for revocation failed.

Section 47(2)(b): - Application for invalidation failed.

Section 47(2)(b): - Application for invalidation failed.

Points Of Interest

• 1. For the purposes of Section 46(1)(d), a lack of use in a particular area is not a ‘use’ by the proprietor.
• 2. The use of the present tense in the wording of Section 47(2)(b) does not allow action in respect of events taking place after registration.

Summary

The attack under Section 46(1)(d) was based on the applicants allegation that the proprietor had used the mark only in S W England and South Wales. From this, the applicants contended that were the proprietor to use the mark in Greater London (where their own mark was in use) it could cause confusion as to the origin of the services. The Hearing Officer rejected this argument, commenting "Lack of use in a particular geographical area cannot be ‘a use’ by the proprietor". The attack under Section 47(2)(b) was based on the opposition that could have been mounted under Section 5(4)(a). The Hearing Officer found that the applicants had not proved that they had the necessary goodwill at the time of registration such as to have been successful in a passing-off action. He went on to say that although Section 47(2)(b) is expressed in the present tense, it does not have the effect of giving rise to a cause of action in connection with events taking place after registration.