Trade mark decision

BL Number

O/053/05

Decision date

2 March 2005

Hearing officer

Professor Ruth Annand

Mark

TRIDENT

Classes

12

Registered Proprietor

Dunlop Tyres Limited

Applicants for Revocation

Trident Tyre Limited

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

Result

The Hearing Officer’s decision respecting the reduction in the specification, upheld.

Points Of Interest

• 1. New points raised on appeal
• 2. Use by the proprietor or with his consent
• 3. Genuine use

Summary

At first instance (see BL O/111/04) the Hearing Officer had found the applicant for revocation partially successful, resulting in a small reduction in the specification.

The applicant for revocation appealed against this decision, contending i) that the Hearing Officer had been wrong in his findings that the burden of proof in Section 100 had been discharged and ii) that the Hearing Officer had applied the wrong test in deciding the issue of partial revocation; the specification should have been reduced to “taxi tyres”. Additionally, it was claimed that the Hearing Officer “ had failed to address himself on the criteria for assessing the weight of hearsay evidence set out in Section 4(2) of the Civil Evidence Act 1995”.

The Appointed Person herself raised the issue of “use by the proprietor or with his consent”, as throughout the relevant period the registered proprietor had been Sumitomo, and she invited the parties to make submissions on this. The registered proprietor contended that this was a new point which could not be raised on appeal.

A further hearing was arranged to settle this and other points.

In respect of the new point, the Appointed Person said “Counsel have directed me to, and I am aware of, no authority to the effect that I must ignore errors of principle necessary to the correct application of the law in question unless those errors have been specifically brought to my attention by the appellant.”

The Appointed Person went on to find that the Hearing Officer had erred by a failure to consider whether the use shown throughout the five year period had been use ‘by the proprietor or with his consent’. She went on to consider the matter herself, rather than remit the matter to the Registry.

In the result she decided that genuine use had been established.

The Appointed Person criticised the Hearing Officer’s approach to the question of the reduction of the specification but eventually came to the view that a specification of ‘taxi tyres’ would not give legal certainty or administrative soundness.

The effect of the Hearing Officer’s decision was therefore upheld on appeal and the registered proprietor was awarded scale costs in respect of the appeal.