Decision Nº O/243/19 from Intellectual Property Office - (Trade market), 9 May 2019
| Judge | Mr Phillip Johnson |
| Administrative Decision Number | O/243/19 |
| Registration Number | UK00003065775, WO0000001352920 |
| Date | 09 May 2019 |
| Court | Intellectual Property Office (United Kingdom) |
BL O/243/19
1
IN THE MATTER OF THE TRADE MARKS ACT 1994
IN THE MATTER OF TRADE MARK REGISTRATION NO 3,065,775 IN THE NAME OF
ION IP LTD
AND IN THE MATTER OF AN APPLICATION FOR A DECLARATION OF INVALIDITY
BY JAMES DONOHUE
AND IN THE MATTER OF INTERNATIONAL REGISTRATION NO 1,352,920
DESIGNATING THE UNITED KINGDOM IN THE NAME OF JAMES DONOHUE
AND IN THE MATTER OF AN APPEAL FROM THE DECISION OF MARK BRYANT
DATED 21 NOVEMBER 2018 (O/746/18)
DECIS ION
Introduction
1. This is an appeal from the decision of Mark Bryant, for the Registrar, dated 21
November 2018. In that decision he dismissed James Donohue’s application for a
declaration of invalidity in relation to a registered trade mark owned by Ion IP Ltd.
Once the mark was found to be valid it followed that Ion IP’s opposition to Mr
Donohue’s application for protection of an international registration had to be
successful.
2. The trade mark in suit (No 3,065,775) owned by Ion IP covers two word marks in a
series DRYSHOD and DRY SHOD. The mark was registered in Class 25 for “Clothing;
footwear; headgear”. The mark was applied for on 25 July 2014 and completed the
registration procedures on 23 January 2015.
3. Mr Donohue applied for protection of an international trade mark in the United
Kingdom for DRYSHOD in Class 25 for “Footwear”. The United Kingdom designation
was dated 14 May 2017. Ion IP opposed the designation under section 5(1) and 5(2)(b)
of the Trade Marks Act 1994 (as applied by article 3 of the Trade Marks (International
Registration) Order 2008 (SI 2008/2206 as amended)).
4. On 28 July 2017, Mr Donohue applied to declare Ion IP’s trade mark invalid on the
grounds it (the series) was registered in bad faith contrary to section 3(6) of the Trade
Marks Act 1994.
5. It was accepted below, and on appeal, that if Ion IP’s trade mark was valid then the
opposition should be successful; and, on appeal only, that if Ion IP’s trade mark was
invalid that the opposition should be dismissed. In either case, therefore, the outcome
of the opposition is entirely dependent upon the success of the declaration for invalidity.
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