Trade mark decision

BL Number

O/244/00

Decision date

13 July 2000

Hearing officer

Mr M Knight

Mark

CAREMIX

Classes

11

Applicant

Altecnic Limited

Opponent

Reliance Water Controls Limited

Opposition

Sections 39, 3(6) & 5(4)(a)

Result

Section 39 - Opposition successful

Section 3(6) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• The applicants appealed this decision to the High Court and the Judge, Mr Justice Laddie, found in their favour. It is understood that that decision is being appealed to the Court of Appeal.

Summary

The applicants applied to register the mark CAREMIX in Class 7 on 15March1997 for "Valves; valves for use in water circulation; blending valves; and all other goods in this Class. Later on 11 April 1997 the applicants requested deletion of the term "and all other goods in this Class" and also a transfer of the application to Class 11. The examiner allowed both requests. The opponents filed two applications for the marks CAREMIX and RELIANCE CAREMIX on 27 March 1997 and they objected to the decision to allow the applicants to transfer their application from Class 7 to Class 11 since this affected their priority in Class 11.

The Hearing Officer considered the decision to allow the transfer of the application from Class 7 to Class 11 in the context of Sections 39, 32 and 34, Rule 8 and the Registrar’s practice as set down in the Trade Marks Registry’s Work Manual. Having considered the requirements of the Act and Rules, the guidance set down in the manual and submissions made at the Hearing, the Hearing Officer concluded that the examiner had been in error in allowing the transfer from Class 7 to Class 11 and the amendment was therefore ultra vires. Therefore, as the application was not properly filed (Section 33) the filing date must be treated as 19 May 1997, the date when the applicants request to change to Class 11 was received in the Registry.

In the light of his decision as regards the request to change from Class 7 to Class 11, the Hearing Officer considered the matter of intention to use, and bad faith under Section 3(6). The Hearing officer accepted that the applicants had filed their application honestly and he saw no grounds for a finding of "bad faith" under Section 3(6).

With regard to Section 5(4)(a) - Passing Off - the Hearing Officer concluded that the opponents evidence was totally insufficient to substantiate their case. Such use as may have occurred only commenced on 7 May 1997, about one week prior to the relevant date, and there may have been some advertising in the previous month. Opponents failed on this ground.