Trade mark decision

BL Number

O/344/02

Decision date

19 August 2002

Hearing officer

Mr D Landau

Mark

MISCELLANEOUS ONLY

Classes

40

Applicant for Invalidity

Henkel KGAA

Registered Proprietor

Inlex Locking Limited

Invalidity

Sections 47(1) based on Sections 3(1)(a) & (1)(1), 3(1)(b), 3(1)(c) & 3(1)(d)

Result

Sections 1(1) & 3(1)(a) - Invalidity failed

Section 3(1)(b) - Invalidity successful

Section 3(1)(d) - Invalidity failed

Section 3(1)(d) - Invalidity failed

Points Of Interest

• 1. Appeal to the Appointed Person. Request to be allowed to file additional evidence refused. (BL O/197/03 dated 7 July 2003).
• 2. On appeal to the Appointed Person the Hearing officer’s decision was upheld for somewhat different reasons. (BL O/074/04 dated 23 March 2004)

Summary

The services covered by the registration read as follows: Applying prevailing torque, non-metallic locking compounds to fasteners and the threaded shanks of components. The mark was applied for in November 1997 and registered on 14 July 2000. The application for Invalidity was filed on 2 April 2001.

The evidence filed by the proprietors in support of their registration was in fact the evidence filed in support of the application prior to registration. The Hearing Officer therefore did not have to consider use after registration.

Under Sections 1(1) and 3(1)(a) the Hearing Officer considered whether the mark at issue was graphically represented. As the colour was precisely identified for a narrow range of services the Hearing Officer determined that the public concerned with this specialised area of trade would understand the description of the mark. He thus considered the description to be a proper graphical representation.

Under Section 3(1)(a) the Hearing Officer went on to consider whether the mark at issue was capable of distinguishing the services of the proprietor at the relevant date. As this is a very low hurdle the Hearing Officer concluded that the registered mark was capable of distinguishing the proprietors services.

Under Sections 3(1)(c) and (d) the Hearing Officer considered that the applicants evidence was insufficient or too vague to support their grounds under these sections. These grounds were thus dismissed.

The essential ground of the proceedings was under Section 3(1)(b) which states that "trade marks which are devoid of distinctive character shall not be registered". Accepting that the mark was not acceptable prima facie the Hearing Officer went on to consider the evidence before him. The registered proprietors are the producers of a red locking compound under the mark ESLOK. They appoint licensees who apply the locking compound and it was claimed that licensees could choose their own colour. Other manufacturers produce locking compounds in other colours.

The evidence established that the colour red was associated with the mark ESLOK rather than the service of applying the compound and, secondly, that more than one licensee used the red ESLOK compound in their service. The Hearing Officer concluded that the evidence did not support a claim that the mark at issue identified the business of the registered proprietors. The applicant for invalidity thus succeeded on this ground.