Decision Nº O/066/22 from Intellectual Property Office - (Trade market), 26 January 2022
| Judge | Mrs J Pike |
| Date | 26 January 2022 |
| Registration Number | UK00003083820 |
| Court | Intellectual Property Office (United Kingdom) |
| Administrative Decision Number | O/066/22 |
O/066/22
TRADE MARKS ACT 1994
IN THE MATTER OF REGISTRATION NO. 3083820
IN THE NAME OF JORDAN OGRADY1 FOR THE MARK
Lung Tester
IN CLASSES 9 AND 28
AND
THE APPLICATION FOR A DECLARATION OF INVALIDITY THERETO
UNDER NO 503867 BY MILES JACKSON
1 The spelling of the registered proprietor’s surname which is recorded on the Trade Mark Register.
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Background and pleadings
1. On 30 November 2014, Jordan OGrady applied for the mark Lung Tester for the
following goods:
Class 9: Scientific teaching apparatus and instrument.
Class 28: Magic Tricks, Games, Playthings.
2. The trade mark application achieved registration on 20 March 2015. On 21 May
2021, Miles Jackson filed an application for a declaration that the registration is invalid,
claiming that it offends section 3(1)(b) of the Trade Marks Act 1994 (“the Act”). Mr
Jackson’s claim is expressed as follows:
“We are applying for invalidation of this trademark on the grounds that the
trademark describes the goods/services, and is not distinctive.
‘Lung Tester’ refers to a type of novelty practical joke item.
The name ‘lung tester’ is the generic common name for a gag product where
you ask your victim to blow into a genuine-looking device, only to have them
surprised by unwittingly blowing a harmless substance in their face.
See appendix 1.1 for historical evidence cataloguing the term ‘Lung Tester’ for
this type of product.”
3. Appendix 1.1 contains material which was later filed by Mr Jackson as part of his
evidence.
4. Mr O’Grady filed a defence and counterstatement in which he denies Mr Jackson’s
claim.2 I note the following:
2 O’Grady is the spelling of the registered proprietor’s surname used in these proceedings.
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