Trade mark decision

BL Number

O/378/02

Decision date

6 September 2002

Hearing officer

Professor Ruth Annand

Mark

PENNY BLACK

Classes

18

Applicants/Respondents

Mr & Mrs Aldridge

Opponents/Appellants

Max Mara Fashion Group S.R.L.

Appeal to the Appointed Person against the decision of the Registrar’s Hearing Officer in Opposition Proceedings

Result

Hearing Officer’s decision set aside; matter remitted to Registrar for further consideration.

Points Of Interest

• 1. Classification : permitted amendments under Section 39(2).

Summary

The opponents appealed against the Hearing Officer’s decision of 25 September 2001 (see BL O/415/01) by which he had allowed the applications to proceed subject to certain deletions from the specification.

However, it emerged that the examination stage had resulted in a reclassification of some of the goods (bags and belts) and a consequent change in the application, from Class 25 as originally filed, to Class 18.

The Appointed Person notified the parties that she wished to be addressed on the subject of this reclassification, in the light of a recent Court of Appeal decision (Reliance Water Controls Ltd v Altecnic Ltd [2001] EWCA Civ 1928, 12 December 2001), which, in essence, barred reclassification of an application if the goods appeared in the Class originally cited as well as the Class to which a transfer was proposed (Section 39(2)).

Having reviewed the facts the Appointed Person decided that the examiner had acted ultra vires in allowing the move from Class 25 to Class 18. Hence, the Hearing Officer’s decision was to be set aside and the matter remitted to the Registrar for further consideration of the classification issue.

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