Trade mark decision

BL Number

O/134/03

Decision date

15 May 2003

Hearing officer

Mr M Reynolds

Mark

SKAGA

Classes

09

Registered Proprietor

Skaga Aktiebolag

Applicant

Skaga UK Limited

Revocation

Sections 46(1)(b) & 46(1)(d)

Result

Section 46(1)(d) - Revocation partially successful.

Section 46(1)(d) - Not considered

Section 64 - Rectification action successful

Sections 47(2)(b) & 5(4)(a) - Not considered

Points Of Interest

• 1. The effect of a request for surrender of a registration by the registered proprietor on other proceedings before the Registrar.

Summary

The above actions were consolidated and the Hearing Officer issued only one decision.

In the early 1990s the firm of Skaga Ltd, a subsidiary of the Swedish company Skaga AG carried on a modest business in the UK with only two main customers for its spectacle frames. A Mr Armstrong was appointed to run Skaga Ltd and to develop the UK market. Frames for spectacles were sourced from the Far East and also Skaga AB and Skaga Ltd produced its own catalogue of products in 1995. They also attended an International Trade Fair at Birmingham.

As the Swedish parent company did not take much interest in the UK Company and was not involved in its day to day operations, Mr Armstrong entered into negotiations with Skaga AB to purchase the Skaga business and name in the UK. A company called Litbuy Ltd was used for the purchase and on completion changed its name to Skaga UK Ltd. The original Skaga Ltd became a dormant company and was eventually struck off the Register. The purchase was completed in December 1995 when the two parties agreed a Distribution Agreement and a Sale Agreement.

At the time the Agreements were completed it would appear to have been overlooked that the mark SKAGA was registered in the UK in the name of Skaga AB.

Following the purchase of the UK business Skaga UK continued to have a trading connection with Skaga AB and this continued until 2001 when Skaga AB decided to find other channels for the sale of their goods in the UK. Hence these proceedings.

Just prior to the hearing to decide the conflict between these two parties, the registered proprietors Skaga AB filed a formal request on 3 April 2003 on Form TM22 to surrender the registration. Having considered the matter carefully and extensively the Hearing Officer decided that the surrender request should be stayed pending the outcome of the various sets of proceedings since, if the applicants were to be successful, it might be that the registered proprietors would be different on the 3 April 2003.

In relation to the rectification request, Section 64, the Hearing Officer considered the Distribution and Sale Agreements carefully and concluded that Skaga UK had purchased the name Skaga for use in the UK in a company name and also trade mark rights in SKAGA. Thus the applicants Skaga UK were successful in their request that their name be entered in the Register as registered proprietors in place of Skaga AB with effect from 29 December 1995.

The Hearing Officer went on to consider the request for revocation under Section 46(1)(d). As the applicants had used the mark SKAGA primarily on goods not sourced from Skaga AB, a claim by Skaga AB that the SKAGA mark represented goods made by them must mean that in use the mark had become deceptive and should be removed from the Register. However, in view of the decision under Section 64 this finding would not be acted upon. The applicants however failed in their other ground under Section 46(1)(d) since the Hearing Officer was not convinced that the mark was sufficiently Swedish to indicate trade origin.

The grounds under Sections 46(1)(b) and 47(2)(b)/5(4)(a) were not considered.