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United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> efax (Trade Mark: Opposition) [2008] UKIntelP o19708 (10 July 2008)
URL: http://www.bailii.org/uk/cases/UKIntelP/2008/o19708.html
Cite as: [2008] UKIntelP o19708
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efax (Trade Mark: Opposition) [2008] UKIntelP o19708 (10 July 2008)
For the whole decision click here: o19708
Trade mark decision
- BL Number
- O/197/08
- Decision date
- 10 July 2008
- Hearing officer
- Mr M Reynolds
- Mark
- efax
- Classes
- 38
- Applicants
- J2 Global UK Ltd (previously Efax Ltd)
- Opponents
- Protus IP Solutions Inc
- Opposition
- Sections 3(1)(b) & 3(1)(c)
Result
Sections 3(1)(b) & (c): Opposition successful.
Points Of Interest
- 1. ‘e’ marks.
- 2. expert evidence; “It is ….. both unnecessary and inappropriate for ‘third party’ attorneys to be invited to file evidence in support of the parties positions as has happened in this case. It amounts in effect to an attempt to instruct the tribunal on the very thing on which it should be expert. Such a practice is to be
- discouraged."
Summary
Having reviewed the evidence and the history of this application (commenting in the process on some evidence filed by the opponents, which took the form of ‘expert evidence on the opinions of third party trade mark attorneys) the Hearing Officer concluded that the combinations of ‘e’ and ‘fax’ for an electronic facsimile transmission service was “a wholly natural and obvious descriptive usage” and he went on to find that the mark had not acquired any distinctiveness by reason of the use which had been made of it. The opposition therefore succeeded.