Trade mark decision

BL Number

O/188/05

Decision date

30 June 2005

Hearing officer

Mr D Landau

Mark

DEVICE ONLY

Classes

12

Registered Proprietor

Uralmoto Ltd

Applicant for Rectification

Otkrytoe Aktsionernoe Obschestvo "IMZ-URAL"

Rectification

Section 60(3)(b)

Result

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

Points Of Interest

• 1. See also BL O/186/05, BL O/187/05 and BL O/189/05

Summary

The applicant for rectification, hereafter referred to as Otkrytoe claimed that it was the owner of the mark in suit registered in the Russian Federation under No 21457. It also claimed that this mark is widely known within the Russian Federation and abroad in relation to "motorcycles and spare parts therefor". It therefore, claimed registration rights in a convention country and 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 in suit 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 in suit. The applicant had not applied the mark in suit to goods coming into the UK and it was only through use and promotion by the registered proprietor that the mark in suit 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. Otkrytoe works in conjunction with two other associated firms. Obschestvo s Ogranichennoi Otvetstvennostiu "Moto-Ural" markets goods which are manufactured by Irbitsky Mototsikletny Zavod. Details of an Agreement between the three companies was filed and the Hearing Officer accepted that they were associated and linked companies. Evidence was also filed to confirm Otkrytoe's ownership of the mark in suit 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 Companies House Register 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 marketing of Otkrytoe's goods in the UK. In Mr Turner's view the marks URAL and IMZ together with the mark in suit 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 and the mark in suit were also filed.

In relation to Otkrytoe's claims, the Hearing Officer accepted that it had proved ownership of the mark in suit in respect of relevant goods in a convention country (The Russian Federation) and as the application had been filed within the three year period following registration of the mark in suit, it could seek redress under Section 60(3)(b) of the Act.

Otkrytoe is the owner of the mark in suit and through its agreement with its associated companies it had been involved in the appointment of the current registered proprietor as agent and representative in the UK. It had not authorised that company to register the mark in suit in the UK. The Hearing Officer noted these facts and the fact that the registered proprietor had filed no evidence to dispute the evidence of Otkrytoe which showed that the mark in suit is associated with that company in the UK.

Application for rectification allowed.