Trade mark decision

BL Number

O/116/03

Decision date

1 April 2003

Hearing officer

Mr Geoffrey Hobbs QC

Mark

OKO

Classes

01

Applicant

Linseal International Ltd

Opponent

Hokochemie GmbH

Opposition

Appeal to the Appointed Person Section 5(2)(b)

Result

Appeal to the Appointed Person - Proceedings stayed to await outcome of associated invalidity proceedings.

Points Of Interest

• 1. See the Appointed Person’s decision dated 23 June 2003 (BL O/195/03). In view of agreement between the parties it was requested that the decisions issued on 28 June 2001 (BL O/282/01) and 29 August 2002 (BL O/361/02) be discharged; appeal by applicant to Appointed Person withdrawn and opponents opposition to applicant’s trade mark Application No 2204593 withdrawn. Also agreement re costs.
• 2. See also earlier decisions BL O/282/01 and BL O/361/02

Summary

The applicants appealed the Hearing Officer’s decision dated 28 June 2001 (BL O/282/01) as confirmed in decision dated 29 August 2002 (BL O/361/02).

As noted in the earlier decision the applicants own a registration for the mark OKO and device in Class 1 in respect of the same goods as applied for here, namely chemical preparations for use in the manufacture, treatment and repair of tyres, sealants, preparations for repair of tyres and preventing punctures in tyres, all included in Class 1.

The opponents opposition was based on an extension of their International Registration to the UK of the mark OKO and device in respect of a wide specification in Class 1 but with an exclusion as follows: “But not including any such goods being preparations for use in the manufacture, treatment or repair of tyres, or for preventing punctures in tyres and not including sealants”.

The Hearing Officer held that the respective marks were similar and that similar goods were at issue despite the exclusion in the opponents specification. He thus found the opponents successful in their opposition against the mark in suit.

In their appeal the applicants argued that the Hearing Officer had erred in reaching his decision under Section 5(2)(b). At the same time, however, on the basis that the Hearing Officer’s decision was correct, they applied for a declaration of invalidity of the opponents’ International mark, based on their prior registered right in the UK.

The opponents supported the Hearing Officer’s opposition decision. However, in the invalidity proceedings they sought to emphasise the differences in the respective marks and respective goods.

The Appointed Person considered that it would be unwise to consider the opposition appeal until the outcome of the invalidity proceedings was known. He thus stayed this appeal pending the outcome of the invalidity proceedings. Either party could ask for the appeal to be restored in appropriate circumstances.