Trade mark decision

BL Number

O/249/00

Decision date

19 July 2000

Hearing officer

Mr C Bowen

Mark

SKYLIFT

Classes

39

Applicant for Rectification & Invalidation

Nationwide Access Limited

Registered Proprietor

Mr Alan William Cross

Applicant for Rectification and/or Invalidation

Sections 47; Section 3(6) & 5(4)(a) & 64

Result

Application for invalidation, Section 47, dismissed. Register rectified; original applicant recorded as registered proprietor.

Points Of Interest

• 1. Assignment of a mark in the ownership of a company in liquidation.
• 2. Registration falling to Crown or Duchy of Lancaster as bona vacantia.

Summary

The applicants contended that the Register should be rectified because the present registered proprietor had assigned the mark to himself when acting as Managing Director of Skylift Platforms Limited. At the date of that transfer, they alleged, Mr Cross had no powers to make any such assignment. In the alternative, they sought invalidation of the registration on the grounds that it had been registered in breach of Section 5(4)(a) and Section 3(6).

The Hearing Officer, after remarking that under the latest rules invalidation and rectification could not be filed as one action, dealt first with the invalidation aspect, in which the applicants claimed an earlier right, under Section 5(4)(a), and in which they also alleged that the mark had been applied for solely to damage them or extract money from them.

As to the bad faith, the Hearing Officer could see no reason why the registered proprietor should not have applied to register a mark he had already adopted several years earlier. Also, the applicants had provided no evidence in support of their allegation. This ground was dismissed.

Evidence of goodwill in the mark, which in any case would have had to have been acquired in a very short period for it to have actually existed at the material date, was likewise absent and the Section 5(4)(a) ground was also dismissed.

Turning to the application for rectification, the Hearing Officer noted that the recollections of the witnesses (the registered proprietor and the liquidator) were at variance, but he concluded that whatever their account, at the date of the assignment the present registered proprietor did not have the necessary power to assign the mark, to himself or anyone else. He therefore directed that the register be amended to show the mark to be in the proprietorship of the original applicant Skylift Platforms Limited. And since this company had been dissolved, the registrations would fall to the Crown or the Duchy of Lancaster as bona vacantia.