Trade mark decision

BL Number

O/176/06

Decision date

22 June 2006

Hearing officer

Mr M Reynolds

Mark

METROPOLIS

Classes

09, 16, 25, 28

Applicant for Revocation

Associated Newspapers Ltd

Registered Proprietor

Wei Ming Cheung

Revocation

Section 46(a) & (b)

Result

Section 46(1)(a): Revocation refused. Section 46(1)(b): Revocation allowed.

Points Of Interest

• As described.

Summary

The mark in suit was registered on 25 September 1998 so the relevant period in respect of 46(a) runs from 26 September 1998 to 25 September 2003. The application for revocation in respect of Section 46(b) runs from 18 November 1999 to 17 November 2004, the 18 November dated being referred to by the applicant.

The registered proprietor claimed use of his mark by another firm with his consent and it would appear that he is Executive Director of that firm. In written submissions prior to the issue of the decision the applicant pointed out that the consent issue had not been verified in the proprietor’s evidence. The Hearing Officer’s dismissed this challenge because the proprietor’s evidence had not been challenged and it was now too late to make that challenge when the proprietor was not able to respond by way of further evidence.

As regards use of the mark in suit, the mark is used on a mail order catalogue which advertises for sale a range of goods within the specifications quoted above thought the goods themselves are not branded with the mark in suit. This use was challenged by the applicant as being use in relation to a mail order service and not in relation to the goods of the specification of the mark in suit. After careful consideration of the use of the mark in suit and the surrounding circumstances, the Hearing Officer decided the use claimed was not in relation to goods but in relation to a mail order service. Therefore the registration was revoked in its entirety with effect from 18 November 2004.