Trade mark decision

BL Number

O/074/07

Decision date

9 March 2007

Hearing officer

Mrs A Corbett

Mark

EFAX

Classes

38

Applicant

Efax Limited

Opponent

Protus IP Solutions Inc

Opposition

Sections 3(1)(b) & (c) & 5(2)(b) Interlocutory Hearing to decide inclusion of Section 5(2)(b) ground.

Result

Request to “strike out” Section 5(2)(b) ground from opposition: Request allowed.

Points Of Interest

• None

Summary

The mark in suit was accepted and advertised on the basis of “Honest Concurrent Use” with registration No. 1465992 and others. The opponent filed notice of opposition including a ground under Section 5(2)(b) based on Community Trade Mark No. 1765205 registered in the name of another proprietor.

This latter mark had also been raised as a citation and overcome by the filing of evidence by the applicant for “Honest concurrent Use” purposes. The applicant therefore claimed that as the opponent was not the owner of mark No. 1765205 the ground under Section 5(2)(b) should be deleted. The opponent disputed this claim.

Following a hearing the Registrar indicated to the parties that the Section 5(2)(b) ground should be “struck out” from the grounds of opposition. He also indicated that he did not consider Section 7 of the 1994 Act to be ultra vires as being contrary to article 4 of the Trade Marks Directive 89/104.

The opponent requested written grounds of decision and the Hearing Officer set down her reasons for deciding as above. In doing so the Hearing Officer rejected arguments that the Registrar could intervene under Section 40 and/or rules 54 and 66 and pointed to the wording of Section 7(2) which makes clear that in “Honest Concurrent Use” cases, only the proprietor of the earlier right can oppose registration.

As regards the validity of Section 7 the Hearing Officer drew attention to Article 5 of the Directive and the latitude allowed to member states as to the stage at which relative grounds may be considered. She went on to decide that Section 7 is not ultra vires.