Freely Available British and Irish Public Legal Information
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> LEX (Trade Mark: Revocation) [2001] UKIntelP o56001 (12 December 2001)
URL: http://www.bailii.org/uk/cases/UKIntelP/2001/o56001.html
Cite as: [2001] UKIntelP o56001
[New search] [Printable PDF version] [Help]
LEX (Trade Mark: Revocation) [2001] UKIntelP o56001 (12 December 2001)
For the whole decision click here: o56001
Trade mark decision
- BL Number
- O/560/01
- Decision date
- 12 December 2001
- Hearing officer
- Mr M Reynolds
- Mark
- LEX
- Classes
- 35, 41
- Applicant for Revocation and Invalidity
- Lex Service Plc
- Registered Proprietor
- Skoda As
- Revocation
- Section 46(1)(d)
Result
Section 46(1)(d) - Revocation failed
Sections 47(2), 5(2) & 5(3) - Invalidity successful
Sections 47(2) & 3(6) - Invalidity failed
Points Of Interest
- 1. "Without due cause" a useful commentary on the meaning of this term in the context of Section 5(3).
Summary
The applicants owned a large number of registrations for the mark LEX in the UK and, in particular, had registrations in Classes 12, 37 and 39 which, inter alia, related to the sale of motor vehicles; repair of motor vehicles and the rental and leasing of motor vehicles. They filed evidence of use of the mark from 1928 onwards showing that at the relevant date, January 1997, they had a significant reputation in relation to these goods and services. The registered proprietors said their mark LEX was devised and adopted in 1993 and that it had been used in Germany. No evidence was filed to substantiate use in the UK.
Under Section 5(2) the Hearing Officer compared the services within the registered proprietors registrations with the goods and services covered by the applicants prior registered marks. He concluded that there was only a slight overlap in relation to management services in Class 35 and that the applicants were therefore successful to that limited extent.
Under Section 5(3) the Hearing Officer noted that the respective marks were identical and that the applicants had shown that they had an extensive reputation in the UK. He thus concluded that use of the mark LEX by the registered proprietors would take unfair advantage and be detrimental to the distinctive character and repute of the applicants mark.
The ground under Section 3(6) failed because the evidence did not establish that the registered proprietors were aware of the applicants mark when they filed their application. The ground under Section 46(1)(d) also failed because there was, in fact, no evidence that the registered proprietors had used their mark in the UK and thus the public could not have been misled.