Trade mark decision

BL Number

O/186/05

Decision date

30 June 2005

Hearing officer

Mr D Landau

Mark

IMZ

Classes

12

Applicant for Rectification

Otkrytoe Aktsionernoe Obschestvo "IMZ-URAL"

Registered Proprietor

Uralmoto Ltd

Rectification

Section 60(3)(b)

Result

Section 60(3)(b): - Application for rectification allowed.

Points Of Interest

• 1. See also BL O/187/05, BL O/188/05 and BL O/189/05.

Summary

The applicant for rectification, hereafter referred to as Otkrytoe, claimed that it was the owner of the mark IMZ (stylised and in Cyrillic characters) in the Russian Federation under No 21457. It also claimed that this mark (the Cyrillic mark) is widely known within the Federation in relation to "motorcycles and parts therefor" and that it has used the mark IMZ in correspondence with foreign dealers. It therefore claimed common law rights and asked that the registration be transferred into its ownership. The applicant also claimed that the registered proprietor had been appointed by an associated company as agent and representative in the United Kingdom and it had not been authorised to register the mark IMZ in its name.

The registered proprietor disputed the applicant's claims in its counterstatement and argued that it was difficult to see what rights the applicant could claim in the UK in relation to the mark IMZ since the mark as registered and used in Russia is in Cyrillic characters and therefore very different. Also the applicant had not affixed the mark IMZ to goods coming into the UK and it was only through use and promotion by the registered proprietor that the mark IMZ was known in the UK. However, as the registered proprietor filed no evidence in the proceedings no weight could be given to comments made in the counterstatement.

The applicant Otkrytoe filed evidence in the proceedings. (Obschestvos Ogranichennoi Otvetstvennostiu "Moto-Ural" marketed goods which are manufactured by Irbitsky Mototsikletny Zavod). Details of an Agreement between the three companies were filed and the Hearing Officer accepted that they were associated and linked companies. Evidence was also filed to confirm Otkrytoe's ownership of the IMZ mark (in Cyrillic) in the Russian Federation.

As regards the registered proprietor, a witness statement was provided by a Mr Neal Charles Turner, a director of the now dissolved Uralmoto (UK) Limited which was formed in June 1998 and "struck-off" the Register of Companies in April 2001. This company had been set up to market the goods of the Otkrytoe group of companies in the UK. Following the demise of Uralmoto (UK) Ltd Mr Turner's co-director, a Mr Burgess, had formed a new company Uralmoto Limited (the current registered proprietor) to continue the marketing of Otkrytoe goods in the UK. In Mr Turner's view the marks URAL and IMZ had been used in the UK and elsewhere before the involvement of Uralmoto. Various exhibits relating to the trade in motor cycles under the marks URAL and IMZ were also provided.

In relation to Otkrytoe's claim the Hearing Officer did not accept that the mark as registered in stylised Cyrillic characters was the equivalent of the trade mark IMZ since the two marks were very different. The application for rectification on the basis of the Russian registered trade mark must therefore fail. The Hearing Officer went on to consider what common-law rights the applicant had in the mark IMZ in the UK but considered that even if such rights could be proved they would only assist in an invalidation action and did not assist the applicant under Section 60.

The Hearing Officer then went on to consider if there had been use of the mark IMZ in Russia. In particular he noted use of the mark in correspondence between parties from the Russian Federation and the Hearing Officer accepted that this usage, together with other associated documentation, was sufficient to show that Otkrytoe owned the mark IMZ in a convention country. As the applicant had taken action within three years of becoming aware of the registration it could seek redress under Section 60(3)(b) of the Act.

The Hearing Officer went on to find that Otkrytoe had proved ownership of the mark IMZ and, in the absence of any explanation from the registered proprietor, he allowed the application for rectification of the Register.