Trade mark decision

BL Number

O/131/06

Decision date

25 May 2006

Hearing officer

Mr M Reynolds

Mark

DONETTE DONETTES (Series)

Classes

30, 42

Registered Proprietor

KevinThomas Rogers

Applicant for a declaration of invalididty

Panrico SA

Application for Invalidation

Section 47 citing Section 3(6)

Result

Application for invalidation, Section 47 (citing Section 3(6)): failed

Points Of Interest

• 1. Actions against marks no longer on the register; determination ‘a posteriori’.
• 2. Abuse of process; proceedings against marks no longer on the register.

Summary

Before dealing with the substantive matter under Section 3(6), the Hearing Officer had to address two issues which arose from the fact that the registration in suit had already been removed from the register as a result of a revocation action which had been determined some 12 months earlier and which had been launched by the same applicant at the same time as the present application. Two questions therefore arose:- i) was it open to the Hearing Officer to declare a mark invalid when it had already been removed from the register and ii) was the continuation of invalidation proceedings against a mark already removed from the register an abuse of process?

After some deliberation, and without making a wider determination on the tribunal’s power to hear an action on a mark already revoked, the Hearing Officer thought it right to allow the applicant to bring this particular action to a conclusion. However, he referred to his ‘lingering concern’ as to how such a course sat with the a ‘posteriori’ provisions in the CTM Regulations.

Turning to the matter under Section 3(6) the Hearing Officer eventually concluded that the applicant’s case did not establish a clear instance of bad faith on the part of the registered proprietor.