Decision Nº O/0157/24 from Intellectual Property Office - (Trade market), 27 February 2024
| Court | Intellectual Property Office (United Kingdom) |
| Judge | Ms C Boucher |
| Date | 27 February 2024 |
| Administrative Decision Number | O/0157/24 |
| Registration Number | UK00918284608 |
O/0157/24
TRADE MARKS ACT 1994
IN THE MATTER OF UK REGISTRATION NO. 918284608
IN THE NAME OF
HM (BEIJING) LASER & NC DEVELOPMENT CO., LTD
IN RESPECT OF THE FOLLOWING TRADE MARK
AND
AN APPLICATION FOR A DECLARATION OF THE INVALIDITY
THEREOF UNDER NO. 505167
BY
XIAOMI INC.
Page 2 of 52
BACKGROUND AND PLEADINGS
1. Trade mark No. 918284608 shown on the cover page of this decision stands
registered in the name of HM (Beijing) Laser & NC Development Co., Ltd (“the
proprietor”). This mark was applied for on 5 August 2020 at the European Union
Intellectual Property Office (“EUIPO”) and registered on 26 November 2020. Pursuant
to the Withdrawal Agreement between the UK and the EU, the mark was automatically
converted to a comparable UK trade mark and the proprietor retained its filing date. It
is registered for the following goods:
Class 7
Laser engraving machines; Laser engraving machines for woodworking;
Engraving machines; Paint marking machines; Photo-engraving machines;
Industrial inkjet printing machines; Computerized engraving machines; Laser
drilling machines for stone working; Laser welding apparatus; Laser welding
machines.
Class 9
Lasers, not for medical purposes; Laser pointers; Optical lanterns; Optical lamps;
Optical lenses; Electron beam accelerators; Vacuum tubes [radio]; Discharge
tubes, electric, other than for lighting; Electric discharge tubes, other than for
lighting; Electronic circuit boards; Computer circuit boards; Circuit boards.
2. On 20 July 2022, Xiaomi Inc. (“the applicant”) filed an application to have this trade
mark declared invalid under the provisions of sections 5(2)(b), 5(3), 5(4)(b) and 3(6) of
the Trade Marks Act 1994 (“the Act”) which are relevant in invalidation proceedings
under section 47 of the Act.
1
The application concerns all the goods for which the
contested mark is registered.
1
The provisions of the Act relied upon in these proceedings are assimilated law, as they are derived
from EU law. Although the UK has left the EU, section 6(3)(a) of the European Union (Withdrawal) Act
2018 (as amended by Schedule 2 of the Retained EU Law (Revocation and Reform) Act 2023) requires
tribunals applying assimilated law to follow assimilated EU case law. That is why this decision refers to
decisions of the EU courts which predate the UK’s withdrawal from the EU.
Page 3 of 52
3. Under sections 5(2)(b) and 5(3), the applicant is relying on the following marks,
which qualify as earlier marks under the provisions of section 6 of the Act by virtue of
their earlier filing dates:
UKTM No. 912672283 (“the 283 mark”)
Application date: 7 March 2014
Registration date: 4 August 2014
Class 9
Computer memories; recorded computer programs for use in database
management, use as a spread sheet, and for word processing; computer keyboards;
recorded computer operating programs; computer peripheral devices; recorded
computer software for use in database management, use as a spreadsheet, and for
word processing; computer monitors; computer mouse; optical blank discs; printers
for use with computers; computer central processing units; data processing
equipment, namely, electronic memory card readers; scanners; notebook
computers; calculators; electronic publications, namely, e-zines featuring electronics
recorded on computer media; downloadable computer software program for use in
database management, use as a spreadsheet, and for word processing; mouse
pads; wrist rests for use with computers; computer game programs; downloadable
mobile phone ringtones; downloadable music files; downloadable image files
containing artwork, text, audio, video, games; Internet Web links on a variety of
topics of general interest; blank USB flash drives; portable computers; galvanic cells;
photocopiers, photographic, electrostatic and thermic, battery chargers; chargers for
electric batteries; telephone apparatus; video telephones; portable telephones;
mobile phone straps; Global positioning system (GPS); hands free kits for phones;
loudspeakers; cabinets for loudspeakers; microphones; televisions; camcorders;
headphones; DVD players; portable media players; cameras; stereoscopes;
Get this document and AI-powered insights with a free trial of vLex and Vincent AI
Get Started for FreeStart Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
Start Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
Start Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
Start Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
Start Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
