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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> REED CATERING GROUP (Trade Mark: Invalidity) [2004] UKIntelP o15204 (1 June 2004)
URL: http://www.bailii.org/uk/cases/UKIntelP/2004/o15204.html
Cite as: [2004] UKIntelP o15204
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REED CATERING GROUP (Trade Mark: Invalidity) [2004] UKIntelP o15204 (1 June 2004)
For the whole decision click here: o15204
Trade mark decision
- BL Number
- O/152/04
- Decision date
- 1 June 2004
- Hearing officer
- Mr G Salthouse
- Mark
- REED CATERING GROUP
- Classes
- 16, 35
- Registered Proprietor
- Reed Business Information Limited
- Applicants for declaration of Invalidity
- Reed Solutions Plc
- Application for Invalidation
- Section 47(1) (citing Section 3(1)(b)) Section 47(2) (citing Sections 5(2)(b) & 5(4)(a))
Result
Application for invalidation Section 3(1)(b): - Successful.
Application for invalidation Section 5(2)(b) & 5(4)(a): - Failed.
Points Of Interest
- 1. Evidence of use: “the Registry should be slow to adopt a “rough and ready approach to issues surrounding evidence of use”.
- 2. Surnames.
- 3. “Distinctiveness by proxy”.
Summary
This was one of two closely related actions heard on the same day. The decisions in respect of the other is set out in BL O/151/04.
Under Section 3(1)(b) the applicant contended that as the mark consisted of a common surname in combination with two wholly descriptive words it should not have been accepted for registration; the evidence of use provided at the examination stage did not confirm that the mark had acquired distinctiveness by reason of use. Under Section 5(2)(b) and Section 5(4)(a), the applications case was based on a registration of their mark REED, in Class 35 and extensive use thereof.
Under Section 3(1)(b) the Hearing Officer considered that if used as a publication the mark REED CATERING GROUP would not act as a badge of origin but as a reference to subject matter. If used in relation to the services specified the mark would not be “origin specific”. The application under Section 3(1)(b) succeeded therefore in relation to the Class 16 goods and Class 35 services.
Under Section 5(2)(b) the Hearing Officer found the applicant’s employment agency services in Class 35 to be not similar to the registered proprietor’s goods in Class 16 and not similar to the registered proprietors services in Class 35. This ground failed as did the ground under Section 5(4)(a) also.
The finding under Section 3(1)(b) however had the effect that the registration was deemed never to have been made.
An award of costs was made in favour of the applicant taking account of their success in one of three grounds of invalidation and the fact that related cases were heard at the same time.