Trade mark decision

BL Number

O/104/03

Decision date

15 April 2003

Hearing officer

Mr A James

Mark

RIVIERA

Classes

30

Applicant for Revocation

Domenico Tanzarella T/A Franco’s Ices

Registered Proprietor

Stella Products Ltd

Revocation

Section 46(1)(a) & (b)

Result

Section 46(1)(a) & (b) - Revocation action successful.

Section 47(1) - Invalidation action failed.

Section 47(2)(a) - Invalidation action successful. Result stayed pending submissions.

Points Of Interest

• 1. Effect of revocation finding on request for invalidation.

Summary

On 23 April 2001 Stella Products Ltd sought a declaration of Invalidity in respect of the mark FRANCO’S RIVIERA CONE in Class 30 and owned by Domenico. Subsequently on 21 May 2001 Domenico sought revocation of the mark RIVIERA in Class 30 and owned by Stella. Although the two sets of proceedings were not consolidated it was agreed by the parties that the Hearing Officer should take account of all the evidence filed in reaching his decision.

The Hearing Officer decided to deal with the revocation proceedings first. Stella claimed to have traded in ice cream products from 1997 onwards and to have 270 customers on its database. The RIVIERA mark was acquired in 1991 and use of it commenced in 1995. Sales were said to total £301k in 1995/6 and £96k in 1996/7 but the supporting documentation was weak. Sales of a new product – an ice cream log – commenced in 1999 but sales to date amounted to only £5,000. Some of Stella’s evidence was criticised by Domenico and this led to some revision by Stella without a full explanation.

As Stella’s registration was in respect of, inter alia, non-medicated confectionery Domenico questioned whether this term covered ice cream products. After full consideration as to the range of products covered by the term “non-medicated confectionery” the Hearing Officer decided that frozen confectionery was included within the scope of that term.

With regard to Stella’s claimed use of their mark RIVIERA the Hearing Officer noted a number of deficiencies in the evidence and a lack of supporting documentation. Taking an overall view of the matter the Hearing Officer considered that Stella had not shown use of the mark RIVIERA in relation to ice cream or ice lollies. Also the use said to have occurred in relation to an ice cream log had only commenced after the dispute between the parties arose and of the £5,000 claimed sales there was no information as to what part of this amount occurred within the relevant period. In effect he considered it to be only “token use” and this was insufficient to save the mark. Revocation allowed.

The Hearing Officer then turned to the application for Invalidity. In the context of Section 5(2)(b) the Hearing Officer noted that on the basis of his finding above that the term “non-medicated confectionery” covered frozen confectionery, identical goods were at issue. In comparing the respective marks RIVIERA and FRANCO’S RIVIERA CONE the Hearing Officer noted that in use the latter mark displays RIVIERA prominently and FRANCO in much smaller lettering. This increased the likelihood of confusion and the Hearing Officer was in no doubt that the two marks were confusingly similar. In view of this finding invalidation would automatically follow but the Hearing Officer stayed his decision for submissions from the parties because of the decision he had reached in the revocation proceedings. In view of his decision on that ground he was minded to consider that the ground for invalidation had disappeared since the applicants mark would be removed from the Register as a result of the revocation action.

The final ground was under Section 3(6). There was no doubt that Domenico were aware of Stella’s mark when they applied to register their mark and Stella claimed that Domenico had promised to cease the use of their mark when existing stocks of packaging etc were used up. The Hearing officer noted that a dispute between the parties was in existence but there was evidence that Domenico had taken legal advice; they had used a different mark; the goods in question were different and it appeared they thought Stella’s mark was susceptible to a non-use attack. In all the circumstances the Hearing Officer did not consider that the application had been made in bad faith. Invalidation failed on this ground.