Trade mark decision

BL Number

O/279/03

Decision date

10 September 2003

Hearing officer

Mr David Kitchin QC

Mark

KINDER SNAPPY

Classes

30, 32

Registered Proprietor/Appellants

Ferrero SPA & Soremartec SA

Applicants for Invalidation/Respondents

Soldan Holding & Bonbonspezialitaten GmbH

Appeal to the Appointed Person against the decision of the Registrar’s Hearing Officer in Invalidation Proceedings

Result

Appeal dismissed.

Points Of Interest

• 1. 'Bad fait'’ : Matters which occur after the date of application for registration "may well assist in determining the state of mind of the applicant at the date of the applications".
• 2. 'Bad faith' : Absence of a bona fide intention to use does constitute bad faith.
• 3. Section 32(3) : Is not incompatible with Community Law and is not ultra vires.

Summary

At first instance (see BL O/291/02) the Hearing Officer had dismissed the grounds under Section 3(1) but had upheld the application under Section 3(6). The registered proprietor appealed against this finding.

The appellants alleged firstly that the Hearing Officer had taken account of matters which had occurred after the date of the applications for registration. The Appointed Person agreed that this was so, but he did not agree that the Hearing Officer was wrong to have done so. Also, although the Hearing Officer had not considered each application separately it was clear that he had assessed the state of mind of the registered proprietors over the whole period during which the applications had been made.

Secondly the appellants claimed that the Hearing Officer had wrongly relied on speculation and assertion and had failed to follow the guidance in ROYAL ENFIELD ([2002] RPC 24, q.v). The Appointed Person, however, found that the allegations of bad faith had been established and the hearing officer entitled to reach the view that he had on the basis of the materials before him. A prima facie case had been made out and had not been answered.

Thirdly it was contended that it was wrong in Law to hold that an absence of a bona fide intention to use a mark at the date of filing could constitute bad faith. It was further contended that Section 32(3) of the Act was ultra vires in that it sought to impose an improper restriction on the term 'bad faith' as it is used in Section 3(6) of the Act.

Having reviewed the law and the relevant authorities the Appointed Person did not accept either of these contentions. Section 32(3) was compatible with Community Law; also, the registrations in issue would have been as vulnerable under the 1938 Act as they were under the 1994 Act.

The appeal was dismissed.