Trade mark decision

BL Number

O/137/01

Decision date

19 March 2001

Hearing officer

Mr G Attfield

Mark

JINI

Classes

07, 09, 38, 42

Applicant

Sun Microsystems Inc

Opponent

Viglen Ltd

Opposition

Sections 5(2)(b) and 5(4) and opposed request by applicant under Rule 68 of the Trade Mark Rules 2000 for extension of time for filing evidence under Rule 13(9), and opposed motion to strike out the grounds of opposition.

Result

Section 5(4) (but not Section 5(2)(b)) to be deleted as ground of opposition. One month further extension of time allowed for filing evidence under Rule 13(9).

Points Of Interest

• 1. Preliminary decision - an interesting situation where a "preliminary view" of the Registry came to be taken as a decision for which a statement of reasons could be requested under Rule 62(2).
• 2. See also O/138/01.

Summary

The applicant, having been granted an extension of time of 3 months to file evidence under Rule 13(9), then sought a further extension of 3 months to allow for the Registry to consider a motion to strike out the cited grounds of opposition. Taking the opponent’s objections into account the Registry issued what was taken to be a preliminary decision effectively upholding the motion in respect of Section 5(4) but allowing the applicant an extension of only one month in which to file evidence under Rule 13(9). Neither party requested to be heard but the applicant sought a statement of reasons for that decision under Rule 62(2).

In dismissing the applicant’s motion to strike out Section 5(2)(b) as a ground of opposition the Hearing Officer took the view that even with the advent of the Trade Mark Rules 2000 (well after commencement of these proceedings) and the practice of examining statements of case (as elaborated in Tribunal Practice Notice 4/2000), there was still no basis for summary judgment against the opponent. Thus, whilst the Registry might now enquire whether some or all of the goods or services of the earlier trade marks are involved, there is still no requirement for an opponent to particularise any perceived similarity between the marks or to provide evidence of confusion or use, or indeed any evidence at all. Where submissions are made in the guise of evidence, this will be given due weight by the tribunal in its final determination.

In his statement of reasons for upholding the applicant’s motion in respect of Section 5(4), the Hearing Officer simply relied on the fact that the opponent volunteered in its evidence to withdraw that ground which had not, in any event, been particularised.

In the light of his findings regarding the applicant’s motion, the Hearing Officer applied the usual case law in coming to the view that an extension of time of one month for filing evidence under Rule 13(9) was sufficient, even generous. The question of costs was deferred to conclusion of the proceedings.