Decision Nº O/359/17 from Intellectual Property Office - (Trade market), 27 July 2017
| Judge | Ms A Michaels |
| Registration Number | UK00003084505 |
| Date | 27 July 2017 |
| Administrative Decision Number | O/359/17 |
| Court | Intellectual Property Office (United Kingdom) |
O/359/17
1
IN THE MATTER OF THE TRADE MARKS ACT 1994
AND IN THE MATTER OF UK TRADE MARK APPLICATION NO. 3084505
IN THE NAME OF YOUDAN TROPHY LTD
AND IN THE MATTER OF OPPOSITION NO. 404010 BY HALLAM FOOTBALL CLUB
AND IN THE MATTER OF AN APPEAL TO THE APPOINTED PERSON
FROM THE DECISION OF LOUISE WHITE DATED 19TH OCTOBER 2016
DECISION ON RECUSAL APPLICATION
1. On 4 December 2014, Youdan Trophy Ltd (“the Applicant”) applied to register a device
mark which contained the name Youdan Trophy in respect of “Organization of soccer
games" in Class 41. The application was opposed on the basis of section 5(4)(a) of the
Act by Hallam Football Club (“the Club") an unincorporated association which claimed
to have earlier unregistered rights in the mark Youdan Cup.
2. The opposition was filed on behalf of the Club by professional advisers (Calder Harris
Limited, since dissolved) but by the time the matter came on for hearing before the
IPO, on 27 July 2016, Dr Scott Loveluck, a member of the Club’s IP Committee, had
taken over conduct of the opposition on behalf of the Club. A number of witness
statements were filed on behalf of the Club. The Applicant’s TM8 was filed by its
director Mr Waugh, but the company subsequently instructed solicitors who by the
time of the hearing before the IPO were Nabarro LLP.
3. On 19 October 2016, Ms Louise White, the Hearing Officer for the Registrar, handed
down a decision (BL/O/488/16) in which she rejected the Club’s opposition to the
Youdan Trophy application.
4. The Club filed an appeal against Ms White’s decision which was in due course allocated
to me for hearing in my capacity as one of the Appointed Persons.
O/359/17
2
5. The appeal was set down for hearing on 12 May 2017. By the morning of the appeal
three problems had become apparent, as a result of which the hearing had to be
treated (as I explain below) as a directions hearing.
6. First, there was an issue as to the scope of the appeal. The TM55 dated 15 November
2016 was submitted to the IPO as a .pdf attachment to an email. In the body of the
form, the reasons for the appeal were stated to be:
"The Hearing Officer made a distinct and material error of principle, not in
accordance with settled Case Law, in respect of the above-stated Opposition
Proceedings. The Decision at First Instance was clearly wrong. Please see the
attached Statement of Grounds in respect of the detailed Grounds of Appeal."
A two page document setting out the Statement of Grounds was attached to the
version of the TM55 which was provided to me and to the Applicant. Strangely,
however, those two pages contained two short paragraphs of legible text, followed by
about a page and a half of the letter è repeated over and over again.
7. The Applicant asked the IPO whether that was the correct form of the TM55 by e-mail
in December 2016. The IPO responded that it was. Those e-mails unfortunately were
not copied to the Club. Dr Loveluck apparently became aware of this issue only shortly
before the hearing. He sent me an e-mail on 11 May (copied to the Applicant’s
solicitor, Mr Webb, of whom more below) complaining that he had not been copied
in to the correspondence in December. He said that the IPO had been working from a
corrupt version of the Grounds of Appeal and attached a copy of a 14 page document
which set out a far broader basis of appeal. Dr Loveluck told me at the hearing that it
was the longer version of the Grounds that had been filed with the TM55. He said that
he had spoken to Mr Colombo at the IPO, who had said that he would ask the IPO’s IT
department to try to see whether the file submitted with the TM55 had been
corrupted, as Dr Loveluck thought. The result of that inquiry was awaited shortly after
12 May.
8. I decided at the hearing that unless the result of the inquiry showed that the longer
version of the document had been filed (and had been corrupted), the Club would
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