Trade mark decision

BL Number

O/061/08

Decision date

28 February 2008

Hearing officer

Mr Richard Arnold QC

Mark

REMUS (stylised)

Classes

25

Applicant for Revocation

Remys Limited

Registered Proprietor

Douglas & Graham Limited

Revocation

Section 46(1)(b)

Result

Section 46(1)(b): Appeal allowed. Application for revocation refused.

Points Of Interest

• See the Hearing Officer’s decision dated 8 June 2007 (BL O/162/07).

Summary

In his decision dated 8 June 2007 (BL O/162/07) the Hearing Officer allowed the application for revocation. The registered proprietor appealed to the Appointed Person

On appeal the registered proprietor challenged the Hearing Officer’s conclusion as to the weight to be given to the evidence of use provided; the variations of use shown and the descriptive and non-distinctive nature of the word UOMO (Italian) for man.

The registered proprietor had provided significant evidence of use of marks incorporating the mark in suit and this evidence was unchallenged. In addition, while in all cases the mark consisted of the words REMUS UOMO, in some instances UOMO was shown with other matter or separated from the REMUS element. It was also claimed that whether or not UOMO would be recognised as a descriptive word it would be deemed as unregistrble by the Registrar and/or the courts.

Having reviewed the evidence before the Hearing Officer the Appointed Person accepted that there was some merit in the registered proprietor’s submissions. The proprietor’s evidence was unchallenged; the examples of use shown indicated that in many instances the mark in suit was the dominant element and there was no doubt that UOMO has descriptive connotations. The Appointed Person went on to conclude that the Hearing Officer had been in error in allowing the rectification and he went on to reverse that decision. In his view there had been use of the mark in suit with elements which did not affect its distinctive character.