Trade mark decision

BL Number

O/029/03

Decision date

30 January 2003

Hearing officer

Mr D Landau

Mark

SCAN O VISION

Classes

09

Applicant for Partial Revocation

Omega Engineering, Inc

Registered Proprietor

Omega SA (Omega AG) (Omega Ltd)

Revocation

Sections 46(1)(a) & (1)(b)

Result

Section 46(1)(a) - Partial Revocation failed

Section 46(1)(b) - Partial Revocation successful

Points Of Interest

• 1. See also BL O/026/03, BL O/027/03 & BL O/028/03 & HC03.06.2003.
• 2. Applicants attempt to widen scope of attack at Hearing stage

Summary

The above mark was registered for a range of goods in Class 9 and the partial revocation requested was in respect of all goods other than "Sports timing equipment".

At a late stage in the proceedings (at the hearing to decide the dispute) the applicants for revocation requested permission to amend the grounds of revocation to revoke the mark in its entirety since in their view the registered proprietors had shown no use of the mark as registered. The Hearing Officer refused the request since the registered proprietors had been under no obligation to show use of their mark in respect of goods on which there was no attack and secondly because the request was made at such a late stage. The Hearing Officer noted that the registered proprietors evidence had been completed some five months prior to the hearing so there had been ample opportunity to make such a request well before the hearing.

The proprietors of the mark in suit claimed that their mark had been used in relation to electronic apparatus incorporating a specialised photo-finish camera for use in horse racing, greyhound racing, cycling and athletics. Some sixty systems had been sold and each system cost between £10k and £15k. Sample invoices were provided and these showed use of a variety of trade marks such as HAWKEYE, SCAN-O-VISION HAWK EYE, OSV HAWK EYE, SCAN-O-VISION BRIDGE etc but none showed use of the mark as registered.

With regard to the evidence filed by the registered proprietors the Hearing Officer concluded that there had in fact been no use of the mark as registered. Even if there had been relevant use the goods in respect of which the use was claimed were not within the specification of the mark as registered. He, therefore, allowed revocation in respect of all goods other than "Sports Timing Equipment" with effect from the date of the application, 14 September 2001.

As all the concentration of the proceedings had been on the 5 year period prior to the filing of the application, the Hearing Officer did not consider it appropriate to allow an earlier effective date of revocation.