Trade mark decision

BL Number

O/076/04

Decision date

23 March 2004

Hearing officer

Mr David Kitchin QC

Mark

MISCELLANEOUS ONLY

Classes

40

Applicant for Invalidity

Henkel KGAA

Registered Proprietor

Inlex Locking Limited

Invalidity

Section 47(1) based on Section 3(1)(b)

Result

Section 47(1) & 3(1)(b) - Invalidity action successful. Appeal dismissed.

Points Of Interest

• 1. See also Hearing Officer’s decision dated 19 August 2002 (BL O/344/02) and Appointed Person’s decision refusing leave to file additional evidence 7 July 2003 (BL O/197/03)

Summary

In his decision dated 19 August 2002 (BL O/344/02) the Hearing Officer had concluded that the mark in suit had not acquired a distinctive character for the following reasons:

(a) Inlex used different colours for different patches. This was likely to lead consumers to understand that the colour denoted the nature of the patch rather than an indication of Inlex as the business that had applied it.

(b) The use of bright colours was common in the trade. They were used so that the patches to which they were applied could readily be seen.

(c) There was no clear identification in the evidence that the red which was referred to in the promotional material used by Inlex was the same red as that of the subject of the registration.

(d) At least one other enterprise used the colour red for exactly the same patches.

(e) The evidence linked the colour red with the trade mark ESLOK far more than with Inlex.

On the basis of the evidence before him the Appointed Person concluded that the Hearing Officer was in error in relation to points (c) and (d) above. As regards (c) it was clear that the colour red on promotional material was the same colour red as used in the mark. As regards (d) it was clear from the history of the registered proprietor that the other user of the mark in suit had been a predecessor in business.

The Appointed Person went on to review the evidence and submissions by Counsel. He accepted that the other reasons set down by the Hearing Officer had merit and that the colours used in the industry denoted the system and its material type rather than the business which had applied it; that Inlex used different colours for different patches and that recognition by one firm was insufficient to conclude that such recognition was industry wide. Decision to allow invalidity confirmed.

The Appointed Person observed if he had considered the matter of representation he would have concluded that the mark in suit was insufficiently designated; merely reproducing on paper the colour in question without using an internationally recognised identification code was not acceptable.