Trade mark decision

BL Number

O/164/06

Decision date

20 June 2006

Hearing officer

Mr G Salthouse

Mark

IN THE PIPELINE

Classes

16

Applicant for Invalidation

Connections (AML) Limited

Registered Proprietor

Pulsar Direct (UK) Limited

Invalidation

Section 47(2)(b) based on Section 5(4)(a)

Result

Section 47(2)(b) based on Section 5(4)(a): Invalidation action successful.

Points Of Interest

• None

Summary

The registered mark has a registration date of 1 May 2003 and the proprietor states that use of the mark commenced in that year. Previously the mark had been used in the Republic of Ireland from 1995 onwards and the proprietor claimed, at least, a reputation and goodwill in Northern Ireland. The use was on publications relating to the sale of plumbing products.

The applicant claimed, and substantiated use of its mark IN THE PIPELINE on a magazine relation to the sale of plumbing products. The mark, as used, was stylised and the registered proprietor suggested that it might be seen as PIPE IN THE LINE. Such a view was disputed by the applicant as IN THE PIPELINE is a recognised term in general usage.

Under Section 5(4)(a) the Hearing Officer noted that both parties were in the same field of activity albeit that the customer base was somewhat different. However, the applicant had proved user from 1989 and had established a reputation and goodwill well before the registered proprietor registered and commenced to use its marks in 1993. The application for invalidation was therefore successful.

Even if the applicant’s mark was seen as PIPE IN THE LINE, which was most unlikely, IN THE PIPELINE and PIPE IN THE LINE were very similar marks.