Trade mark decision

BL Number

O/043/05

Decision date

17 February 2005

Hearing officer

Mr Richard Arnold QC

Mark

MERLIN

Classes

36

Applicant

SVM Asset Management Limited

Opponent

Merlin Biosciences Limited

Opposition

Appeal to the Appointed Person against the decision of the Registrar’s Hearing Officer in opposition proceedings.

Result

Opponent’s appeal partially successful in respect of the Hearing Officer’s finding under Section 5(4)(a).

Points Of Interest

• Disclaimers; not impermissible if framed by reference to the scope of the services offered; contrast between goods and services; POSTKANTOOR distinguished.

Summary

At first instance (see BL O/181/04) the Hearing Officer had found the opponent partially successful under Sections 5(1), 5(2)(a) and 5(4)(a). Both sides appealed to the appointed person against these findings, and both asked to be heard although neither had sought a hearing in the Registry. The appointed person commented that "if cases are important to parties ………….. it would be preferable for the parties to give the first instance tribunal the benefit of full argument rather than reserving it for an appeal". And he warned that failure to do so ran "the risk that an appeal will not succeed because (the parties) are unable to demonstrate an error of principle on the part of the Hearing Officer."

The opponent applied for permission to amend its statement of case by the inclusion of an objection under Section 5(3) in relation to similar services. Having considered the matter the Appointed Person refused the amendment, which would in any case have necessitated remission of the matter to the Hearing Officer.

Turning to the applicant’s grounds of appeal the Appointed Person considered first the disclaimer which had been offered and which, it was alleged, had been ignored by the Hearing Officer. The Appointed Person agreed with the applicant’s contention that the Hearing Officer had erred in not taking account of the disclaimer, and he went on to consider a second disclaimer which (at his suggestion) the applicant had offered at the appeal hearing.

The opponent argued that both these disclaimers were impermissible (POSTKANTOOR [2004] ETMR 57).

The Appointed Person, however, did not accept this contention. Both disclaimers were free from the POSTKANTOOR objection since they were framed not by reference to an absence of a particular characteristic of the services but were restrictions on the scope of the services specified. Services, by contrast with goods, could be defined in part by the recipient of the service.

The Appointed Person went on to find that the first disclaimer was a complete answer to the objection under Section 5(1). The impact of the second disclaimer (which had not been offered before the Hearing Officer) was considered in respect of the Section 5(2)(a) objection, and the Hearing Officer’s decisions in respect of similarity and distinctiveness were considered afresh. The ‘determinative objection’ in this case, however, was that under Section 5(4)(a), said the Appointed Person. In a number of respects the Appointed Person found that the Hearing Officer had “not approached his task entirely correctly”.

In the result, however, the Appointed Person allowed the opponent’s appeal in respect of some of the services. The Hearing Officer’s costs order was set aside and no order as to costs was made in respect of the appeal