Trade mark decision

BL Number

O/100/06

Decision date

10 April 2006

Hearing officer

Mr M Foley

Mark

BRUTT HELICAL

Classes

06, 19

Applicants for Invalidation

Daniela Brutt, Brutt Saver Germany GMBH, Brutt Saver Hungary KFT

Registered Proprietor

Target Fixings Limited

Invalidity

Section 47(1) based on Section 3(6) & Section 60

Result

Section 3(6): Application for invalidation failed. Section 60: Application failed.

Points Of Interest

• The applicants appealed to the Appointed Person. In his decision dated 20 December 2006 (BL O/372/06) the Appointed Person overturned the Hearing Officer's decision and allowed the appeal.

Summary

A somewhat involved case which requires careful reading. BRUTT is a family name and forms part of the name of companies formed by the family between June 1997 and September 1999. Of interest is the Brutt Helical Kft (Hungary) company which was formed in June 1997 with the aim of cooperation with Target Fixings Ltd (the registered proprietor). Target became a 50% shareholder on 4 May 1998.

Cooperation and a trading arrangement between Brutt and Target continued for some time but there was breakdown in 2000 when Target’s parent company withdrew from the joint venture and sold it shares in Brutt Helical (now Brutt Saver). At that time Target withdrew permission to use Target’s intellectual property, specifically, drawings, translated text and photographs. No mention was made of trade marks.

The applicants claim that target was allowed to use the name BRUTT but was never given permission to register it as a trade mark. In fact the registrations in suit only came to light when application was made to register the mark BRUTT at OHIM. Other proceedings are in force in OHIM, currently at appeal stage. The applicants claim ownership of the marks in suit whereas the registered proprietor claims to have adopted the marks because BRUTT is phonetically close to the English word BRUTE meaning strength.

The Hearing Officer examined the claims and counterclaims of the two parties in some detail but in the event he concluded that the onus of establishing that the registered proprietor had registered the marks in suit in bad faith, rested on the applicants. As the evidence was somewhat inconclusive he did not consider that that onus had been satisfied and therefore the application must fail.

In view of his decision under Section 3(6) the Hearing Officer decided that the application under Section 60 must also fail.