Trade mark decision

BL Number

O/368/03

Decision date

21 November 2003

Hearing officer

Mr S P Rowan

Mark

V vehicleoptions.co.uk

Classes

12, 36

Applicant for Invalidity

Vehicle Options Limited

Registered Proprietor

Mr Shafeeq Akram

Invalidity

Section 47(1) & (2) based on Sections 3(6) & 5(4)(a)

Result

Section 3(6): - Invalidity action successful

Section 5(4)(a): - Invalidity action failed.

Points Of Interest

• 1. The Hearing Officer decided that the successful invalidity action should apply to the whole of the registration in Classes 12 and 36.

Summary

The applicant for invalidity stated that they had made substantial use of the mark VEHICLEOPTIONS from December 1998; that Mr Akram had been appointed a franchisee on 29 July 1999 and that termination of the agreement between the parties had been given on 2 February 2000. Thus Mr Akram was a franchisee when he applied to register the mark in suit on 11 February 2000. Therefore, that application had been made in bad faith.

Both parties filed evidence but in his consideration under Section 5(4)(a) – Passing Off – the Hearing Officer observed that the applicant’s evidence of use up until 11 February 2000 was not well focused and he was unable to conclude that they had the necessary reputation and goodwill at that date. Invalidity failed on this ground.

As regards the ground under Section 3(6) the Hearing Officer noted that the agreement between the parties did not mention ownership of marks. However, he accepted that Mr Akram must have been aware that the applicant carried on a business under the trade mark VEHICLEOPTIONS when he was appointed as a franchisee and he was not therefore in a position to claim ownership of the mark in suit when he applied for registration at a later date. Invalidity thus succeeded on this ground.

There was a parallel dispute about the registration and ownership of internet names but the Hearing Officer was only able to deal with the trade mark side of the dispute.