Decision Nº O/0272/24 from Intellectual Property Office - (Trade market), 28 March 2024
| Court | Intellectual Property Office (United Kingdom) |
| Judge | Mr James Hopkins |
| Date | 28 March 2024 |
| Administrative Decision Number | O/0272/24 |
| Registration Number | UK00003731383, UK00003779858 |
O/0272/24
TRADE MARKS ACT 1994
CONSOLIDATED PROCEEDINGS
IN THE MATTER OF APPLICATION NOS. 3731383 & 3779858
IN THE NAME OF JOHNSON MATTHEY DAVY TECHNOLOGIES LIMITED
TO REGISTER THE FOLLOWING TRADE MARKS:
HyCOgen
AND
JOHNSON MATTHEY HYCOGEN
IN CLASSES 40, 42 & 45
AND
IN THE MATTER OF OPPOSITIONS THERETO
UNDER NOS. 432198 & 435521
BY CLARIANT PRODUKTE (DEUTSCHLAND) GMBH
Page 2 of 30
Background and pleadings
1. On 10 December 2021 and 21 April 2022, Johnson Matthey Davy Technologies
Limited (“the applicant”) applied to register the trade marks HyCOgen and JOHNSON
MATTHEY HYCOGEN in the UK, under numbers 3731383 and 3779858 (“the
applicant’s first mark” and “the applicant’s second mark”, respectively). They were
published for opposition purposes on 31 December 2021 and 13 May 2022.
Registration of both marks is sought for services in classes 40, 42 and 45, as set out
in the annex to this decision.
2. On 25 March 2022 and 12 August 2022, respectively, Clariant Produkte
(Deutschland) GmbH (“the opponent”) opposed the applications in full under section
registration number 904753745, HyProGen (“the opponent’s mark”).2 The opponent’s
mark was filed on 23 November 2005 and became registered on 16 November 2006
in respect of the following goods, all of which are relied upon for the purposes of its
claims:
Class 1: Chemicals used in industry, in particular catalysts, catalyst carriers and
adsorbents.
Class 7: Catalytic converters.
3. Given the respective filing dates, the opponent’s mark qualifies as an “earlier trade
mark” in accordance with section 6 of the Act. As it completed its registration process
more than five years before the filing dates of the applicant’s marks, it is subject to the
proof of use requirements specified within section 6A of the Act.
1 On 7 November 2022, the proceedings were consolidated p ursuant to rule 62(1)(g) of the Trade Marks
Rules 2008.
2 On 1 January 2021, the UK left the EU after the expiry of the transition period. Under Article 54 of the
Withdrawal Agreement, the Registry created comparable UK trade marks for all r ight holders with an
existing EUTM. As a result of the o pponent’s EUTM number 4753745 bein g registered as at the end of
the Implementation Period, a comparabl e UK trade mark was automatically creat ed. The comparable
UK mark is now recorded on the U K trade mark register, has the sam e legal status as if it had been
applied for and registered under U K law, and retains its original filing dat e.
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