Trade mark decision

BL Number

O/056/02

Decision date

28 January 2002

Hearing officer

Mr David Kitchin QC

Mark

GOLF COURTS

Classes

16, 28, 35, 37, 41, 42

Registered Proprietor

John DeVere

Applicant for Rectification

Farel Bradbury

Rectification

Section 60(3)(b). Appeal from Hearing Officer's decisions dated 8 August 2001 ( BL O/342/01 & O/343/01).

Result

Appeal from Hearing Officer's decisions dated 8 August 2001. Hearing Officer's decisions set aside and proceedings remitted to the Registry for a re-hearing.

Points Of Interest

• 1. Grounds of Action: It is important that the grounds at issue are clearly set down at the outset and, if a private applicant is involved, that he/she understands any advice given and any changes made.
• 2. Summary of reasons for proceedings being remitted to the Registry. A serious matter to be decided.
• Applicant had proceeded under a misapprehension.
• While grounds not clearly specified the reasons for the claim were set down.
• The applicant was misled by advice from the Registry.
• Extensive evidence was filed by the applicant about use of the mark and relationship with theproprietor.
• The fact that neither party attended the hearing meant that the Hearing Officer had no opportunity to clarify matters.
• The applicant had acted on his own behalf.
• Clear public interest in deciding the status of these registered marks.
• 3. See Hearing Officer's decision dated 29 August 2002 ( BL O/358/02) where he refused the applicant’s request to be entered in the Register as proprietor.
• 4. That decision was appealed to the Appointed Person. In her decision dated 7 April 2003 (BL O/111/03) the Appointed Person allowed the appeal under Section 60 and directed that the applicant’s name be entered in the Register as proprietor.

Summary

The Appointed Person noted that at the outset the applicant=s grounds to have ownership of the registered marks transferred into his ownership were vague and not specific. Following a request from the Registry the grounds were amended to include a reference to Section 60(3)(b) and it was later claimed by the applicant that he had not fully understood the restrictions imposed on that Section by Section 55(2) of the Trade Marks Act 1994.

Following the filing of evidence which showed that there had been a relationship between the current registered proprietor and the applicant the proceedings were decided by a Hearing Officer from the papers as neither party wished to be heard. In his decisions the Hearing Officer noted that the applicant had failed to prove proprietorship in a Convention Country as required by Section 60(3)(b) and therefore that his application must fail at the outset.

The Appointed Person considered the papers before him and took account of submissions at the hearing by the applicant. The Appointed Person accepted that the applicant had proceeded under a misapprehension as to the definition of a Convention Country and had not been aware of Section 55 of the Act. He also considered that there was a serious issue to be decided, namely the ownership of the marks on the Register and therefore that justice required that an exceptional course of action be adopted. He therefore listed all the reasons why he was setting aside the Hearing Officer=s decisions and remitting the matter to the Registrar for a re-hearing of the issues. He also proposed that there should be a preliminary hearing at which the issues at stake could be identified and directions given for the amendment of the pleadings and the filing of further evidence.

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