Trade mark decision

BL Number

O/314/99

Decision date

8 September 1999

Hearing officer

Mr A James

Mark

FSS

Classes

09, 36

Applicants

FNX Limited

Opponents

Financial Software Systems Inc.

Opposition

Section 35(1) & 35(3) Priority of application date. Sections 5(1), 5(2)(a), 5(4)(a), 1(1), 32(3) (3(6). Late request to add new ground of opposition under 3(1)(b) refused.

Result

S.1(1) - opposition failed

S.32(3) and S.5(2)(a) - priority allowed in respect of Class 9 so opposition failed under 5(2)(a)

S.5(4)(a) - case re passing off not substantiated. Opposition failed.

S.32(3) and S.3(6) - Class 36 application made in bad faith S(3)(6). Class 9 application not made in bad faith S(3)(6). Also S3(6) ground not successful on the basis of agreement between the two parties in the USA.

Points Of Interest

• 1. International Priority What constitutes a valid filing in an overseas country so that priority under S.35 can be claimed. Section 35(3), S.32, Rules 5(1), 8(2) and 11 considered. However, H/O decided that applicants had first used the mark FSS in the UK by way of a predecessor in business but little reputation attached to such use. Opponents had no use at the relevant date, therefore opposition under 5(4)(a) failed. With regard to Section 3(6) applicants did not have a valid priority claim and secondly evidence established no intention to use in respect of Class 36 services. Class 36 to be deleted from application. Second leg of bad faith S.3(6) related to Agreement between the parties. Bad faith not established particularly as applicant had already entered into agreement at the relevant date, to buy an existing UK company who claimed use of the mark FSS in the UK.
• 2. Assignment Action to be taken if opponent objects to an Assignment, as there is no provision for opposition. Correct mechanism would be to file an application for rectification under S.64 of the Act.

Summary

FNX applied to register the mark FSS in Classes 9 & 36. Later assigned mark to Financial Systems Software (UK) Ltd. Opposition by Financial Software Services who claimed use of the mark FSS. The two parties were formed following the dissolution of an earlier company FX Systems Inc and there was an Agreement of Dissolution. Claim by opponents of bad faith in relation to applications filed in US. Both parties claimed use of mark but no significant use of mark in the UK by either party established.