Trade mark decision

BL Number

O/252/04

Decision date

18 August 2004

Hearing officer

Mr G Salthouse

Mark

Inv 81269

Applicant for Invalidity

Adam Sells

Registered Proprietor

Sports Supplies Limited

Invalidity

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

Result

Section 47(1) & Section 3(6) - Invalidity action successful

Section 47(2) & Section 5(2)(b) - Invalidity action failed

Section 47(2) & Section 5(4)(a) - Invalidity action failed

Points Of Interest

• None

Summary

The applicant for Invalidity Mr Adam Sells had been a director of the registered proprietor from 1999 until November 2001. In December 2001 he formed a company Sells Goalkeeper Products Ltd and claimed to have sold goods under the mark SGP together with the word SELLS. A mark consisting of a stylised device (said to be the letters SGP) together with the word SELLS was applied for on 18 January 2002 and registered on 3 January 2003.

During the applicant’s time at the registered proprietor (SSL) that company had used the mark S SELSPORT and device but subsequent to his departure had applied to register the marks SELLS and SGP. The mark SELLS was withdrawn following opposition by the current applicant.

The relevant date of these proceedings is the 13 February 2002, the date of filing of the proprietor’s mark, and from the evidence before him the Hearing Officer concluded that the applicant had no sales of goods under his mark prior to the relevant date. Therefore, under Section 5(2)(b) the Hearing Officer had only to compare the respective marks, it being common ground that identical goods were at issue. As the Hearing Officer did not accept that the device element within the applicant’s mark would be seen as the letters SGP, he concluded that the respective marks were not similar. Opposition failed on this ground.

Opposition also failed on the Section 5(4)(a) ground because the applicant had no reputation or goodwill in his mark at the relevant date.

In his consideration of the bad faith issue under Section 3(6), the Hearing Officer noted the filing of the marks SGP and SELLS after the applicant had set up his company Sells Goalkeeper Products Ltd and commenced to promote his business under the marks SGP and SELLS. Also the proprietor had not replied in his evidence to the direct accusation that he had seen the applicant’s promotional material prior to filing his applications. In all the circumstances the Hearing Officer considered that the ground under Section 3(6) should succeed.