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United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> DIALOGUE (Trade Mark: Revocation) [2001] UKIntelP o33001 (31 July 2001)
URL: http://www.bailii.org/uk/cases/UKIntelP/2001/o33001.html
Cite as: [2001] UKIntelP o33001
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DIALOGUE (Trade Mark: Revocation) [2001] UKIntelP o33001 (31 July 2001)
For the whole decision click here: o33001
Trade mark decision
- BL Number
- O/330/01
- Decision date
- 31 July 2001
- Hearing officer
- Mr J MacGillivray
- Mark
- DIALOGUE
- Classes
- 35
- Applicant for Revocation
- Dialog ABC Limited
- Registered Proprietor
- Publicis Limited
- Revocation
- Sections 46(1)(b) & 46(5)
Result
Section 46(1)(b) - Revocation failed
Section 46(5) - Revocation failed
Points Of Interest
- 1. Consent. One of the matters arising from consent - or lack of it might be misrepresentation (Section 46(1)(d)). However, in this case the applicants had not raised it as a ground at the outset.
- 2. The applicant appealed this decision to the Appointed Person. In his decision dated 15 February 2002 (BL O/084/02) the Appointed Person upheld the Hearing Officer’s decision.
Summary
The registered proprietors indicated that they had used the mark DIALOGUE from about 1990 through to 1995. At that time Publicis Dialogue was closed down and the business continued by way of a management buy-out under the name The Dialogue Agency Limited who continued to use the mark DIALOGUE with the consent of Publicis (the registered proprietor). Subsequently evidence was filed by both the registered proprietor and the Dialogue Agency which showed that the mark used in relation to public relations, advertising etc was THE DIALOGUE AGENCY.
As a first step the Hearing Officer considered whether or not use of the mark THE DIALOGUE AGENCY constitutes use of the mark DIALOGUE. As he considered DIALOGUE to be the distinctive element and the words "THE" and "AGENCY" to be totally non-distinctive and descriptive, he decided that use of the mark THE DIALOGUE AGENCY would count as use of the mark DIALOGUE.
A second matter to be considered was the matter of the consent of the registered proprietor. No details of any license or agreement was filed and it was argued by the applicants that consent had not been given. However, both the registered proprietors and the users had stated in their statutory declarations that consent had been given and the Hearing Officer accepted that consent had been given. In so accepting he noted that consent can be granted on the basis or a verbal agreement or contract.
Two other issues were addressed by the Hearing Officer. Use of the mark as distinct from a company name and the scope of the use. In both instances the Hearing Officer found in favour of the registered proprietors; the overall result being that the applicants failed with their application.