Trade mark decision

BL Number

O/250/06

Decision date

29 August 2006

Hearing officer

Professor Ruth Annand

Mark

Red Envelope

Classes

35, 42

Applicant

Redenvelope Inc

Opponent

Red Letter Days Plc

Opposition

Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b): Appeal dismissed, Opposition failed. Section 5(3): Appeal dismissed, Opposition failed. Section 5(4)(a): Appeal dismissed, Opposition failed.

Points Of Interest

• 1. A request for the matter of material date to be referred to the ECJ was refused.
• 2. Appeal from Hearing officer decisions dated 15 June 2005 (BL O/166/05 and BL O/167/05).

Summary

This was an appeal against the Hearing Officer’s decisions dated 15 June 2005 (BL O/166/05 and BL O/167/05) in which he found that the opponent failed in its opposition under all grounds against the mark in suit. The opponent appealed to the Appointed Person on the basis that the Hearing Officer had (a) incorrectly assessed the opponent’s evidence and (b) failed to take account of, or give sufficient weight to, the persuasive evidence before him.

There was a preliminary issue to be decided. After the filing of the appeal, but before the hearing, the opponent went into administration. All the assets and goodwill were acquired by a company called AIC Ltd. Subsequently the opponent changed its name to Oldco 2005 Ltd and AIC Ltd changed its name to Red Letter Days Limited. Thus by the time of the Hearing the opponent was a different company as compared to the company which had filed the opposition and appeal. After consideration of the facts before her the Appointed Person noted that she had the power to allow a new party to join the proceedings and issued instructions as to the nature of the request to be made and the documentary evidence to be filed. This occurred after the Hearing and the Appointed Person allowed the new company to join the proceedings.

The opponent also made a request to allow additional evidence into the proceedings. The applicant objected and the Appointed Person decided not to allow the additional evidence into the proceedings because it had been available but not filed with the original evidence. Also it was arranged in a different fashion as compared to the original evidence and cross checking would cause problems and entail much effort.

The opponent also raised a fresh question as to the material date of the proceedings which had been accepted by the Hearing Officer as the date of application for the marks in suit. There had been no argument as regards this matter before the Hearing Officer. At the conclusion of his decision the Appointed Person dismissed this point as she was of the opinion that the opponent’s case was not improved by evidence relating to the period after the filing dates and before the hearing.

The Appointed Person listed the main points of complaint by the opponent at paragraph 31 of her decision and went on to consider them in the context of the Hearing Officer’s decision under Sections 5(2)(b), 5(3) and 5(4)(a). Having carefully considered the evidence which was before the Hearing Officer, and his handling of it, the Appointed Person dismissed the appeal under all these grounds and upheld the Hearing Officer’s decision to refuse the opponent’s opposition.