Trade mark decision

BL Number

O/249/99

Decision date

23 July 1999

Hearing officer

Mr M Reynolds

Mark

K2

Classes

34

Applicant

Lakson Tobacco Co Ltd

Applicant for Revocation

Essex Match Co Ltd

Revocation

Sections 46(1)(a)&(b)

Result

Sections 46(1)(a)&(b) - Application succeeded, registration revoked with effect from the end of the 5 year period following completion of the registration procedure.

Points Of Interest

• 1. Assignment/intervention - Dealing with a late challenge concerning the consequences of an assignment of title to the mark in suit, the Hearing Officer concluded that although the proper course would have been for the present proprietor to have intervened under Rule 13(5), the powers available to him under the Rule allowed him to regularise the proprietor’s position. Moreover, the assignment was accepted at face value notwithstanding doubts as to compliance with UK stamp duty requirements.
• 2. Reputation - It was for the proprietor to show use of the mark in suit not reputation.

Summary

The mark in suit (covering manufactured and non manufactured tobacco) remained unused in the UK from the date of completion of the registration procedure, namely 16 August 1969, but the proprietor relied on proper reasons for non-use arising by virtue of a Council Directive (90/239/EEC) which limited the tar yield of cigarettes from 31 December 1992, with a further reduction applicable from 31 December 1997. According to the proprietor, it did not have the facilities to comply with the directive.

However, the Hearing Officer concluded that Section 46(3) did not provide a legitimate defence to a charge of non-use in a situation, as here, where a proprietor simply fails to use a mark but then seeks to benefit from a circumstance that could not have been anticipated when the application was filed. He found support for his interpretation of Section 46(3) from Article 12 of the Council Directive (89/104/EEC) on which the UK legislation was based. The application therefore succeeded.

In the event he was found to be wrong on that point of law, he proceeded to find that in any event it was likely to have been within the proprietor’s power to use the mark, and it was merely a corporate decision not to do so simply because compliance with the Directive would have required some compromise on the taste of the finished product. In his view that was very clearly not a proper reason for non-use.