Trade mark decision

BL Number

O/330/01

Decision date

31 July 2001

Hearing officer

Mr J MacGillivray

Mark

DIALOGUE

Classes

35

Applicant for Revocation

Dialog ABC Limited

Registered Proprietor

Publicis Limited

Revocation

Sections 46(1)(b) & 46(5)

Result

Section 46(1)(b) - Revocation failed

Section 46(5) - Revocation failed

Points Of Interest

• 1. Consent. One of the matters arising from consent - or lack of it might be misrepresentation (Section 46(1)(d)). However, in this case the applicants had not raised it as a ground at the outset.
• 2. The applicant appealed this decision to the Appointed Person. In his decision dated 15 February 2002 (BL O/084/02) the Appointed Person upheld the Hearing Officer’s decision.

Summary

The registered proprietors indicated that they had used the mark DIALOGUE from about 1990 through to 1995. At that time Publicis Dialogue was closed down and the business continued by way of a management buy-out under the name The Dialogue Agency Limited who continued to use the mark DIALOGUE with the consent of Publicis (the registered proprietor). Subsequently evidence was filed by both the registered proprietor and the Dialogue Agency which showed that the mark used in relation to public relations, advertising etc was THE DIALOGUE AGENCY.

As a first step the Hearing Officer considered whether or not use of the mark THE DIALOGUE AGENCY constitutes use of the mark DIALOGUE. As he considered DIALOGUE to be the distinctive element and the words "THE" and "AGENCY" to be totally non-distinctive and descriptive, he decided that use of the mark THE DIALOGUE AGENCY would count as use of the mark DIALOGUE.

A second matter to be considered was the matter of the consent of the registered proprietor. No details of any license or agreement was filed and it was argued by the applicants that consent had not been given. However, both the registered proprietors and the users had stated in their statutory declarations that consent had been given and the Hearing Officer accepted that consent had been given. In so accepting he noted that consent can be granted on the basis or a verbal agreement or contract.

Two other issues were addressed by the Hearing Officer. Use of the mark as distinct from a company name and the scope of the use. In both instances the Hearing Officer found in favour of the registered proprietors; the overall result being that the applicants failed with their application.

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