Trade mark decision

BL Number

O/130/02

Decision date

21 March 2002

Hearing officer

Mr D Landau

Mark

THE ORIGINAL EL TORITO RESTAURANT EST 1954

Classes

42

Applicant for Invalidity

Centralize Limited

Registered Proprietor

El Torito Restaurants Inc

Invalidity

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

Result

Sections 47(2) & 5(4)(a) - Invalidity action successful.

Sections 47(4) & 3(6) - Invalidity action failed.

Points Of Interest

• 1. Section 3(6) and Bad Faith. The filing of a fresh application to protect a continuing interest in a mark, where earlier registrations may be vunerable to attack , may be considered prudent commercial behaviour when coupled with a bona fide intention to use.
• 2. Just prior to the hearing the agents for the applicant demanded information from the registered proprietor and then one day later sought to reduce this demand to a request for information rather than disclosure. The Hearing Officer concluded that a request for disclosure had been made and because of the work involved in this matter, which was not pursued at the hearing, awarded an element of costs to the proprietor.

Summary

The registered mark had been applied for in respect of "Restaurant services etc" on 15 April 1997 and registered on 23 January, 1998. The proprietor also had earlier registrations but it was common ground that they might be vunerable to attack on the grounds of non-use.

The applicant had opened a restaurant in the Esher area under the name EL TORITO in February/March 1996 and by April 1997 had built up a thriving business with, the Hearing Officer accepted, more than a local goodwill. Under Section 5(4)(a) - Passing Off - the Hearing Officer concluded that the applicant had a relevant goodwill at the relevant date and that there was the likelihood of deception if the registered proprietor used its mark. Invalidity action successful on this ground.

The ground under Section 3(6) was on the basis that the registered proprietor had filed its application merely to protect its position because its earlier registration might be open to attack. The applicant, therefore, claimed there was no intention to use. The applicant filed no evidence to support this ground whereas the registered proprietor filed details of his efforts to franchise the EL TORITO chain of restaurants in the UK. The Hearing Officer determined that the applicant had not made good its claim under this head and they failed in its action in respect of Section 3(6).

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