Trade mark decision

BL Number

O/183/99

Decision date

5 July 1999

Hearing officer

Mr D Landau

Mark

CONSEAL

Classes

17

Applicant

Caswick Limited

Opponent

The Thompson Minwax Company

Opposition

Request by the opponent to substitute a new legal entity as opponent

Result

Request for substitution of new opponent - Request refused

Request for substitution of new opponent - Request refused

Opposition filed in the name of a non-existent company - Opposition invalid

Opposition filed in the name of a non-existent company - Opposition invalid

Points Of Interest

• 1. The Hearing Officer’s decision was appealed to the Appointed Person (see Appointed Person decision dated 12 April 2000 BL O/197/00).
• 2. In the BETAMAG case [2000] IP&T 467 Pumfrey J held that the Registrar had an inherent power to permit a successor in interest to pursue opposition proceedings in lieu of the original opponent.
• 3. See also BL O/187/99 which has a review of Pumfrey J’s decision dated 18 January 2000 (HC 1999 No 03286).

Summary

Notice of opposition to the above mark was filed on 18 September 1997, in the name of The Thompson Minwax Company. On 15 September 1998, the Agents for the opponent wrote to the Registrar to say that following a merger The Thompson Minwax Company had ceased to exist and The Sherwin Williams Company was now the proprietor of the marks relied upon in the opposition. The agents asked that the new company be substituted in place of the original opponent in the opposition proceedings. The Registrar refused in the light of a decision taken on another case and the issue of a Practice Direction which appeared in the Trade Marks Journal on 7 April 1999.

The Opponents continued to press their case and asked for the Registrar’s reasons in writing. They also pointed to the fact that the request to substitute the name of the opponent with that of the name of the new owners of the marks relied upon, and been made before the new practice of refusing substitution had been announced.

The Hearing Officer essentially decided that substitution was not possible since this would be akin to granting an extension of time to a new party to launch opposition proceedings whereas that period was an non-extendable period of three months. (Rule 13 of the Trade Marks Rules 1994). Also he decided that he had to apply the law at the date of his decision and therefore the fact that the application had been made before the change of practice did not affect his approach.

The Hearing Officer also noted that the certificate of merger was dated 31 March, 1997 and thus the opponent, the Thompson Minwax Company, had ceased to exist at that date. Therefore, it was not in existence when the opposition was filed on 18 September, 1997. For there to be a valid opposition there had to be an opponent and if no opponent existed then the opposition must be held to be invalid.

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