Trade mark decision

BL Number

O/108/06

Decision date

20 April 2006

Hearing officer

Mrs J Pike

Mark

RELATE WITH PARTNER LIMITED

Classes

16, 42, 44, 45

Applicant for Invalidity

Relate

Registered Proprietor

Dr Mark Harries

Invalidity

Section 47(1) & 2(a) based on Sections 3(6) & 5(2)(b)

Result

Section 47(1) based on Section 3(6): Invalidity action successful. Section 47(2)(a) based on Section 5(2)(b): Invalidity action successful.

Points Of Interest

• As described.

Summary

The applicant for invalidity owns registrations of the mark RELATE in Classes 41, 42 and 45. It claimed that the mark in suit was similar to its registered mark and that identical/similar goods and services were at issue. It also claimed that the mark in suit had been applied for and registered in bad faith.

The registered proprietor failed to respond to the application and the applicant was asked to file evidence and submissions in support of its claims. The applicant pointed out the similarities of the respective marks and also the goods and services at issue. It also filed details of confusion on the part of customers who assumed that the registered proprietor and the applicant were associated.

Under Section 5(2)(b) the Hearing Officer accepted that the respective marks RELATE and RELATE WITH PARTNER LIMITED were similar; also that identical and similar goods and services were at issue. The Hearing Officer concluded that there was a likelihood of confusion and noted that this conclusion was supported by the instances of actual confusion as detailed by the applicant. Invalidity thus succeeded on this ground.

The allegation of bad faith was based on the fact that the High Court had issued a restraining order against Dr Harries (the Registered Proprietor) and others on 10 May 2004. The mark in suit had been applied for on 12 May 2004 and, in the absence of any explanation, the Hearing Officer decided that the applicant also succeeded on this ground.