Trade mark decision

BL Number

O/322/02

Decision date

8 August 2002

Hearing officer

Mr J MacGillivray

Mark

TAXMATE

Classes

09, 35, 36

Applicants

Taxmate Limited

Opponents

Raphael, Vive & Co & Yngve F Traberg

Opposition

Sections 3(6) & 5(4)(a)

Result

Section 3(6) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• None

Summary

The first opponents in these proceedings owned the internet domain name "taxmate.com." which they also claimed to have used as a trade mark prior to the relevant date. The second opponents owned the internet domain name "Taxmate.co.uk" but claimed no use. The objection by both parties under Section 3(6) was on the basis that the applicants were aware of their rights when they made their application for registration and had in fact attempted to purchase those rights before the application was made.

Under Section 5(4)(a) - Passing Off - the Hearing Officer examined the evidence filed by the first opponents but could not identify any use as a trade mark prior to the relevant date. The domain name had been used to identify the services of the opponents but there had been no trade under the name. As the opponents had no reputation or goodwill at the relevant date their ground under this section had no basis and must fail.

Under Section 3(6) the applicants explained that they had adopted the domain name "www.taxmate.co" and traded under that name in Ireland. As they wished to expand their business to the UK they had sought to purchase other similar domain names but agreement had not been possible. The Hearing Officer decided that knowledge of similar domain names was no bar to an application for a trade mark since there is no intellectual property right in a domain name unless such a right was established through use. That was not the case here and the Hearing Officer concluded that the Section 3(6) ground failed.