Trade mark decision

BL Number

O/042/03

Decision date

7 February 2003

Hearing officer

Mr M Reynolds

Mark

OCEAN

Classes

25

Applicant for Invalidity

Societe De Fabrication et de Diffusion Textile-Sofaditex

Registered Proprietor

Airofame Limited

Opposition

Section 47(2)(a) based on Sections 5(1), 5(2)(a) & 5(2)(b)

Result

Section 47(2) based on Sections 5(1), 5(2)(a) & 5(2)(b) - Application for Invalidity failed.

Points Of Interest

• 1. Practice in the Community Trade Mark Office may vary as compared to that in National Offices (First Council Directive 89/104)

Summary

The applicants for invalidity had applied for registration of their International Mark OCEAN WEAR in Class 25 and the mark in suit had been raised as a citation. A request for consent to registration had been refused. Also cited as an obstacle was a Registered Community Trade Mark, also being the mark OCEAN in Class 25. This mark had a prior date of registration as compared to the mark in suit and it had consented to the registration of the applicants mark. The applicants thus claimed that as the Community Trade Mark was a prior mark the mark in suit had been registered in error having regard to the provisions of Section 5 and should be removed from the Register.

Also by way of background it transpired that when the mark in suite was examined the earlier Community Trade Mark had not been raised as a citation so consent had not been requested before registration. Following the filing of the application for invalidity the owners of the mark in suit sought consent from the owners of the prior Community Trade Mark and this was given and filed with the Registrar.

The applicants for invalidity argued that the late filed consent should not be accepted since it had not been filed prior to registration and secondly that it had been filed after the launch of these proceedings. The registered proprietors argued that the late consent should be accepted since the proper construction of Section 47(2) allowed for acceptance at any time.

The Hearing Officer considered the matter carefully with reference to practice in the Community Trade Mark Office and the wording of Section 47(2) of the 1994 Act. In his view it was clear that there could be a different practice in the Community Trade Mark Office as compared to National Offices and in this case it was proper to decide the matter in the light of practice in the UK Office, taking account of the provisions of the Trade Marks Act 1994. He concluded that the late filed consent could be accepted and thus the application for Invalidity failed