Decision Nº O/410/11 from Intellectual Property Office - (Trade market), 16 November 2011
| Judge | Mr Daniel Alexander QC |
| Administrative Decision Number | O/410/11 |
| Registration Number | UK00002478624, UK00002483892 |
| Date | 16 November 2011 |
| Court | Intellectual Property Office (United Kingdom) |
O-410-11
IN THE MATTER OF APPLICATION NO. 2478624 BY ADVANCED
PERIMETER SYSTEMS LIMITED TO REGISTER THE TRADE MARK
MULTISYS IN CLASS 9 AND IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 97557 BY MULTISYS COMPUTERS LIMITED
AND THE CONSOLIDATED CASE IN THE MATTER OF APPLICATION NO.
2483892 BY KEYCORP LIMITED TO REGISTER THE TRADE MARK
MULTISYS IN CLASSES 9 & 42 AND IN THE MATTER OF OPPOSITION
THERETO UNDER NO. 98119 BY ADVANCED PERIMETER SYSTEMS
LIMITED
DECISION
Introduction
1. This case involves cross-applications to register the trade mark MULTISYS
by both sides. On one side is Multisys Computers Limited and its parent company
Keycorp Ltd. (together Key) who have traded under the mark MULTISYS primarily
in business administration hardware, software and related services since 1991. On the
other side is Advanced Perimeter Systems Ltd (APS) which trades principally in
specialist perimeter fence equipment, part of which involves computer (including
software) control equipment. It has adopted the mark MULTISYS more recently for
certain of its products.
APS’s application
2. APS applied for UK trade mark registration first. On 1 February 2008, it
filed an application to register MULTISYS in respect of the following goods in
Class 9:
“Perimeter fence security control system comprising control hardware for
monitoring and detection, control software for monitoring and detection; all for
use with physical electrical fencing for land, buildings and physical premises.”
2
3. Following examination, the trade mark was accepted and published for
opposition purposes on 11 April 2008. On 11 July 2008, the mark was opposed under
s.5(4)(a) of the Trade Marks Act 1994 (the Act) by Multisys Computers Limited on
the basis of its alleged earlier use, goodwill and reputation in the mark MULTISYS.
Key’s application
4. Shortly after APS’s application, on 2 April 2008, Key filed an application to
register MULTISYS in respect of the following goods and services:
In Class 9: Computer software, computers, computer hardware.
In Class 42: Computer programming, computer advisory, consultancy and
design services, computer support, rental and hire of computer software.
5. The mark was examined, accepted and published on 25 July 2008. On 23
October 2008 it was opposed by APS on the basis that APS was the proprietor of
trade mark 2478624 (i.e. APS’s mark referred to above). The opposition alleged that
the goods were identical to the Class 9 goods it had applied for and similar to the
Class 42 services applied for. The mark was therefore said to offend against s.5(1) and
s.5(2)(a) of the Act.
6. As Multisys Computers Limited is wholly owned by Keycorp Limited and the
issues interlinked, the two cases were consolidated. The Hearing Officer rejected
Key’s s.5(4)(a) passing off attack on APS’s application. In consequence, that mark
was an earlier mark with which to attack Key’s application. Having given Key an
opportunity to amend its specification, which Key declined to take, he upheld APS’s
s.5(1) and s.5(2)(a) opposition to Key’s application. Key appeals.
Issues on appeal
7. There are two broad issues on this appeal.
8. First, Key contends that the Hearing Officer was wrong to hold that it had
failed to make out a case under s.5(4)(a) of the Act. Stripped to essentials, Key’s case
is that the Hearing Officer adopted the wrong approach to evaluating the evidence of
goodwill and the likelihood of misrepresentation, in part because he rejected evidence
he was not entitled to reject. Key says that the decision he reached was against the
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