Trade mark decision

BL Number

O/142/08

Decision date

21 May 2008

Hearing officer

Mrs J Pike

Mark

9 bar (stylised) & device

Classes

30

Applicant for Revocation

Wholebake Limited

Registered Proprietor

The Big Bar Company Limited

Revocation

Section 46(1)(a) & (b) Interlocutory Hearing re the exercise of the Registrar’s discretion under Rule 31(3)

Result

Rule 31(3): Registered proprietor allowed to join the proceedings.

Points Of Interest

• Discussion about where the burden of proof rests in revocation and invalidation cases (Paragraph 20).

Summary

The mark in suit was applied for and registered in the name of a Mr Paul Benhaim with a registration date of 30 November 1995. The address for service was given as 29 London Road, Stanford Rivers, Ongar, Essex CM5 9PM and this address was still on the register when the applicant for revocation filed its application on 30 august 2007. The revocation documents were served on the registered proprietor on 3 September 2007 at the registered address for service but there was no response within the three month period allowed.

The mark in suit was assigned to the new registered proprietor The Big Bar Company Limited in August 2007 but the formalities were not completed until early September 2007 and the appropriate form requesting recordal of the assignment was filed with the Registry on 10 September 2007. It would appear that the applicant for revocation was aware of the assignment of the mark to the Big Bar Company as its legal advisors wrote to its associates. However, at this stage in early September The Big Bar Company was not aware of the revocation application.

On 11 December 2007 the Registry wrote to the original proprietor to say that the registration was undefended and asked if he wished to be heard or make submissions. At this stage the Big Bar Company became aware of the application for revocation and requested that the period for filing a defence be reset so that the necessary documentation could be filed.

The Registry indicated a willingness to do this but the applicant for revocation objected. Subsequently an interlocutory hearing was arranged to consider a request for the exercise of the Registrar’s discretion under Rule 31(3) to allow the Big Bar Company to join the proceedings. After hearing the parties, the Hearing Officer indicated that she would allow The Big Bar Company to join the proceedings and allowed a period of six weeks for evidence to be filed to satisfy the requirements of rule 31(3). Subsequently the applicant for revocation asked for a statement of reasons for the decision.

The Hearing Officer relied upon guidance in the Registrar’s Practice direction 1/2006, which was based on prior High Court decisions, to decide that the wording of Rule 31(3) allows the Registrar to exercise his discretion, and went on to decide in this case that the registered proprietor should be allowed to join the proceedings. She observed that Rule 35(1) gives the Registrar power to allow an intervener to enter proceedings at a late stage and it would appear inequitable that a registered proprietor should not have the same rights.