Trade mark decision

BL Number

O/127/04

Decision date

12 May 2004

Hearing officer

Mr J MacGillivray

Mark

POWERFOAM

Classes

06, 11, 17, 19

Registered Proprietor

Power Piping International BV

Applicants for a declaration of invalidity

Bergen Power Pipe Supports Inc

Application for Invalidation: Section 47(1) (citing Section 3(6))* (*a ground under Section 5(4)(a) was withdrawn at the hearing)

Result

Application for invalidation Section 47(1) (citing Section 3(6)).

Points Of Interest

• 1. Bad faith : registration by former business associates; burden of proof.

Summary

The applicant for invalidation of this International Trade Mark claimed that they had used the mark in the UK since 1981 and the registered proprietor had served as a local distributor in the UK and elsewhere. Hence the registered proprietor had had the mark registered in bad faith.

Following a review of the relevant authorities concerning ‘bad faith’ under Section 3(6) the Hearing Officer turned to consider the facts in this case. He recorded his view that much of the evidence filed in the case amounted to little more than unsupported assertion; and neither party had applied to cross examine the other’s witnesses. For the applicant to succeed they needed to make out a prima facie case establishing that: (i) the registered proprietor could not reasonably have believed that he possessed the goodwill in the POWERFOAM mark in the UK and (ii) that he had registered the mark to take unfair advantage of the applicant’s plans for the UK market following the termination of “the agreement” between the parties. The Hearing Officer noted that the evidence left much to speculation and inference. It was not enough. The applicant had not discharged the onus on them to provide a prima facie case and the application for invalidation failed accordingly.