Trade mark decision

BL Number

O/146/02

Decision date

15 March 2002

Hearing officer

Professor Ruth Annand

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

• 1. A useful summary of the approach to be taken in considering the scope of Agreements entered into in a foreign country.
• 2. Where exhibits are included as evidence, then any relevant matter depended upon should be translated in the same way as it is necessary to provide a translation of a Statutory Declaration.
• 3. It is dangerous in the conduct of any litigation to make any assumptions abut the adequacy of one's proof of the contentions of which one assumes the burden. If evidence is available it should be put in.

Summary

This was an appeal from the Hearing Officer's decision dated 6 July 2001 (BL O/296/01). The Appointed Person considered in some detail the terms and context of an Agreement between the two parties in Italy in settlement of a dispute in the late 1970's. Like the Hearing Officer she concluded that it was unlikely that the terms of the Agreement had any relevance outside Italy and therefore that the registered proprietor had not acted in bad faith (Section 3(6)) in registering his name in the United Kingdom.

With regard to the Section 5(4)(a) - Passing Off - ground the Appointed Person agreed with the Hearing Office that the invoice evidence supplied by the applicant was deficient in that it was not translated into English; the products were apparently sold to one company and there was no evidence filed to confirm that the goods in question bore the POLLINI mark.

In passing the Appointed Person observed that the Hearing Officer had taken a very generous view of both parties evidence in stating that there had been honest concurrent use of both marks prior to the relevant date. In her view this was far from certain. In any event the applicants for invalidity had not established that they had a passing off right at the relevant date and the Appointed Person agreed that the Hearing Officer had been right in deciding that the applicants failed in their Section 5(4)(a) ground.

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