Trade mark decision

BL Number

O/391/01

Decision date

10 September 2001

Hearing officer

Mr G Salthouse

Mark

BS BANCO SAFRA

Classes

36

Registered Proprietor

Banco Safra S.A.

Applicants for Declaration for Invalidity

Safra S.A.

Application for Invalidation

Section 47(2)(a)

Result

Section 47(2)(a): - Application for invalidation successful.

Points Of Interest

• Section 56 provides a basis for opposition or invalidation; it does not serve as a defence in invalidation proceedings.

Summary

This was one of four closely related actions; see also BL O/392/01, O/393/01 and O/394/01. In this case the marks were BANCO SAFRA and shield device v SAFRA . The mark in suit was filed on 8 July 1998 whereas the applicants’ mark had an international priority date of 1 July 1998. The Hearing Officer therefore concluded that the applicants’ mark was an earlier trade mark for the purposes of Section 5(2). He went on to find that the services were closely related and the ‘distinctive parts’ of the mark were identical; he therefore concluded that there was a likelihood of confusion and the application succeeded accordingly. The registered proprietors had invoked Section 56 of the Act claiming that their mark was entitled to protection under the Paris Convention. The Hearing Officer however ruled that Section 56 provided a basis for an opposition or an invalidation; it did not serve as a defence in invalidation proceedings. Besides, he said, the registered proprietor had provided no evidence in support of his claim.