Trade mark decision

BL Number

O/101/03

Decision date

14 April 2003

Hearing officer

Mr S P Rowan

Mark

OKO

Classes

01

Registered Proprietor

Linseal International Ltd

Applicant for Revocation and a Declaration of Invalidity

Trevor John Evans

Application for Invalidity

Sections 46(1)(d) & 47 (Sections 5(4)(a) & 5(4)(b))

Result

Application for revocation, Section 46(1)(d) - failed

Application for invalidation, Section 47(2)(b) (Section 5(4)(a)) - failed

Application for invalidation, Section 47(2)(b) (Section 5(4)(b)) - successful

Points Of Interest

• 1. Copyright; action does not have to be brought by the holder of the copyright.

Summary

The progress of this action, up to and during the hearing had been complicated and prolonged due to some obscurity in the bases of the action and requests for cross-examination etc. The non-attendance of one witness for cross-examination, which had been ordered, meant that his evidence was disregarded. A late request for cross-examination of another witness was turned down. There was uncertainty as to the status of the revocation portion of the action. The Hearing Officer allowed a further period for written submissions on the matter.

The Hearing Officer dealt first with invalidations application based on Section 5(4)(b) of the Act by which the applicant claimed to be the proprietor of the copyright in the mark.

It was common ground:- that there was copyright in the stylised version of the mark; there was no copyright in the word OKO; there was no dispute that at the date of application the registered proprietor did not have the legal title to that copyright. The Hearing Officer therefore concluded that absent an agreement/licence to use the copyright, the invalidation action under Section 5(4)(b) would have to succeed. Having reviewed the matter the Hearing Officer found that at the date of application the use of the mark was liable to be prevented by the law of copyright, and the invalidation action under Section 5(4)(b) succeeded accordingly.

The evidence did not establish a case under Section 5(4)(a).

Finally, and having considered the later filed written submissions the Hearing Officer found that there was no evidence that by reason of the use of the mark, by the proprietors or with their consent it was at the relevant date liable to mislead the public. This ground was dismissed.

In the result the action under Section 47(2)(b) succeeded and in accordance with Section 47(6) was deemed never to have been made.