Trade mark decision

BL Number

O/197/00

Decision date

12 April 2000

Hearing officer

Mr Geoffrey Hobbs QC

Mark

CONSEAL

Classes

17

Applicants

Caswick Limited

Opponents

The Thompson Minwax Company

Opposition

(1) Request by the opponent to substitute a successor in title as opponent(2) Opposition filed in the name of a non-existent company

Result

1. Request by opponents to substitutea successor in title as opponent. - In normal circumstances request would have been allowed

2. Opposition filed in the name of a non-existent company - Opposition not valid

Points Of Interest

• 1. This was an appeal from the Hearing Officer’s decision dated 5 July 1999 (SRIS O/183/99).

Summary

With regard to the change in opponent in opposition proceedings the Appointed Person followed the decision of Pumfrey J in the BETAMAG Trade Mark case where he held that the Registrar had an inherent power to permit a successor in interest to pursue properly constituted opposition proceedings in lieu of the original opponent.

On 31 March 1997 The Thompson Minwax Company (the opponents and other companies in the group were merged with and into The Sherwin Williams Company. When the opposition was filed on 18 September, 1997 The Thompson Winwax Company had ceased to exist even though it was still recorded as the registered proprietor of the marks upon which the opposition was based. It was thus argued that it had been proper to file the opposition in the name of the registered proprietor and change the name of the opponent when the assignment of the marks to the new owners was recorded.

The Appointed Person decided on the basis of the papers before him, including submissions from the opponents’ agents, that the notice of opposition was intentionally filed in the name of a non-existent company and thus it was not a valid opposition. It was not therefore possible for the opposition to continue in the name of the new merged company The Sherwin Williams Company. Hearing Officer’s decision upheld.