Trade mark decision

BL Number

O/130/99

Decision date

11 May 1999

Hearing officer

Mr A James

Mark

BSA

Classes

12

Registered Proprietor

Norton Motors (1993) Ltd

Applicants for Revocation

Regal Engineering Co Ltd

Application for Revocation

Section 46(1)(b)

Result

Section 46(1)(b) - Application for revocation successful.

Section 46(1)(b) - Application for revocation successful.

Points Of Interest

• 1. Calculation of the five year period.
• 2. Discretion.
• 3. There is "no basis for providing better known marks with additional protection against revocation for non-use than less well-known marks".

Summary

The registered proprietor claimed (i) there had been use; alternatively (ii) use began within the three months prior to the filing of the application for revocation, following preparations begun prior to any knowledge of the forthcoming attack; alternatively, (iii) there were proper reasons for non-use, and finally Section 46 gave to the tribunal a discretion which should be exercised in favour of this famous mark. The applicants for revocation were proprietors of a company licensed by the registered proprietor.

Since the application for revocation did not specify any particular 5 year period the Hearing Officer ruled that that period was the five year period ending on the day prior to the date of the application. The Hearing Officer was satisfied that there had been no genuine use of the mark within the relevant period and such preparations for resumption of one as there had been had not resulted in use; they did not provide a defence against the attack on the registration because they "did not precede resumption of use after expiry of the five year period and before the date of the application for revocation. Thus they (did) not fall within the conditions set out in the first part of Section 46(3)."

The Hearing Officer decided that there were no proper reasons for non-use and he went on to consider the matter of discretion. He noted that there was some debate as to whether or not a discretion was granted to the tribunal and whilst he favoured the view that there was not, he nevertheless went on to consider the case for such an exercise. He had no hesitation in finding that the applicants’ position as a licensee of the registered proprietor did not provide a basis for such an exercise. Neither did he see a case for additional protection for such a well-known mark.

The application for revocation succeeded accordingly.