Trade mark decision

BL Number

O/249/01

Decision date

6 June 2001

Hearing officer

Mr M Reynolds

Mark

GERBER

Classes

05

Registered Proprietor

Gerber Products Company

Applicants for Rectification

Gerber Foods International Limited

Rectification: Trade Marks Act 1938, Section 26* (*another ground, under section 32, was pleaded, but was abandoned at the hearing)

Points Of Interest

• 1. Section 26 Bona fide use; use as samples; use in test - marketing exercise, use on foreign military bases in UK.
• 2. Discretion: residual reputation.

Summary

The Hearing Officer first confirmed that in his view the applicants for rectification had the necessary status of being persons aggrieved, since they were themselves applicants for marks which were being prevented by the presence on the Register of the registration they were seeking to have removed.

Use of the mark in the UK had been in the hands of a licensed manufacturer and there was no doubt that they had ceased to use it.

The use relied on by the registered proprietor therefore consisted, essentially, of a test marketing in a small area, and sales to US Military bases in the UK. Regarding the test marketing exercise, without suggesting that it was "fictitious or colourable use" to protect the registration, the Hearing Officer decided that the low level of sales, the one off nature of the trade and the absence of follow-up activity meant that it could not be held to be bona fide use.

Regarding the use claimed by reason of sales to US military bases in the UK, the Hearing Officer took the view that these did not provide a defence in this case. In case he should be found wrong, however, he went on to consider what would be the effect if such use was taken into account. "With some hesitation" he concluded that in that case the registered proprietor should retain the registration but only for a specification which reflected the particular and very specialist market served.

Finally, the Hearing Officer considered the matter of the Registrar's discretion. Whilst he accepted that there was some "residual reputation" in the mark, he decided that this was not a case where the Registrar's discretion should be exercised to preserve the registration given the circumstances in which use had ceased and the continuing US military base use notwithstanding.

In the event he ordered the removal of the registrations but remarked that if he were held to be wrong in his decision respecting the sales to US military bases, then either on the basis of that use or as a matter of discretion the registrations could retain their registrations for that limited area of trade.