Trade mark decision

BL Number

O/296/01

Decision date

6 July 2001

Hearing officer

Dr W J Trott

Mark

ARMANDO POLLINI

Classes

18, 25

Registered Proprietor

Armando Pollini

Applicant for Invalidity

Calzaturificio Pollini SpA

Invalidity

Sections 47(1) & 47(2)(b) based on Sections 3(6) & 5(4)(a)

Result

Sections 47(1) & Section 3(6) - Invalidity action failed

Section 47(2)(b) & Section 5(4)(a) - Invalidity action failed

Points Of Interest

• The applicants for invalidity appealed this decision to the Appointed Person. In her decision dated 15 March 2002 BL O/146/02 the Appointed Person upheld the Hearing Officer's decision.

Summary

There had been a dispute between these two parties as far back as 1976 in Italy and an out of court settlement had taken place which placed some restrictions on the proprietors use of his own name as a mark. However, there was no indication that Agreement applied to jurisdictions outside Italy and the Hearing Officer decided in all the circumstances that making an application to register his name as a trade mark in the UK was not an act of bad faith on the part of the proprietor.

With regard to the Section 5(4)(a) ground - Passing Off - the applicants for invalidation provided turnover figures from 1987 to 1994 amounting to £800K (pounds sterling) and twelve invoices relating to the period 1981 to 1987. This latter evidence related to some £72K (pounds sterling) of business and was defective in that it was not translated into English, the products went to only one company and no examples of the goods were provided to confirm that they bore the POLLINI mark.

The registered proprietor claimed use of his mark in the UK from 1986 onwards and turnover in the relevant period to 1994 amounted to approximately £455K (pounds sterling). There had thus been concurrent use for a considerable period and no evidence of confusion. Having considered the matter in some detail the Hearing Officer decided that the applicants could not have succeeded in a passing off action in 1995 - the relevant date - and that they failed on this ground

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