Trade mark decision

BL Number

O/316/07

Decision date

30 October 2007

Hearing officer

Mr M Foley

Mark

PYROGEN

Classes

09

Applicants

Alien Systems & Technologies (Proprietary) Limited

Opponents

Pyrogen Technologies SDN BHD

Opposition

Sections 3(6), 5(4)(a), 56 & 60

Result

Section 3(6): Opposition successful. Section 5(4)(a): Opposition failed. Section 56: Not considered. Section 60: Opposition successful.

Points Of Interest

• 1. The definition of “agent or representative” should not be narrowly drawn and can include “distributor”.
• 2. The applicant appealed to the Appointed Person. In her decision dated 11 August 2008 (BL O/236/08) the Appointed Person upheld the Hearing Officer's decision and dismissed the appeal.

Summary

The opponent in these proceedings explained how the company AES acquired ownership of the PYROGEN technology by way of three agreements dated September 1996, June 1997 and September 1997. AES assigned its rights to the opponent in 1997.

Pyrogen Limited, a UK company, first used the mark PYROGEN in the UK in 1998. Products were provided to the UK company by the opponent and it marketed the PYROGEN products in Europe and the UK. The opponent acquired the UK company in February 2000 and it became a wholly owed subsidiary of the opponent. Trade continued until 2004 when the UK company was wound up and it is currently in liquidation. The opponent states that it continued to supply PYROGEN products to another company called Pyroshield Limited.

As regards the mark in suit the opponent says that in the year 2000 the UK company Pyrogen Limited supplied PYROGEN products to the current applicant and allowed it to market and distribute these products in the UK.

The Hearing Officer carefully considered the evidence filed and had the benefit of submissions from counsel for both parties. In the Hearing Officer’s View the relationship between the applicant and the UK company Pyrogen Ltd took place when it was a wholly owned subsidiary of the opponent. That being the case the applicant had a relationship with the opponent through the wholly owned subsidiary and the provisions of Section 60 applied. Even though the UK company had ceased trading by the time the applicant applied for the mark in suit, the evidence showed that the opponent was still trading through another company Pyroshield and clearly had not abandoned its mark. Opposition Succeeded on the Section 60 ground.

As regards the Section 3(6) ground the applicant claimed that the mark in suit had been abandoned when the UK company Pyrogen Ltd had gone into liquidation. However, the Hearing Officer noted that the opponent still continued to trade in the UK through another company and given the specialised nature of the product, fire extinguishing apparatus, the applicant could easily have discovered this trade if it had wanted to. Opposition succeeded on this ground.

The opponent failed on the ground under Section 5(4)(a) - Passing Off - because the Hearing Officer was not convinced that at the date of application for registration of the mark in suit, the opponent had acquired a goodwill in the mark PYROGEN in the UK.