Decision Nº O/426/20 from Intellectual Property Office - (Trade market), 7 September 2020

CourtIntellectual Property Office (United Kingdom)
JudgeMs S Wilson
Registration NumberUK00003313574, UK00003319998
O/426/20
CONSOLIDATED PROCEEDINGS
IN THE MATTER OF REGISTRATION NO. UK00003313574 AND NO.
UK00003319998
IN THE NAME OF MARK HALL
FOR THE FOLLOWING TRADE MARKS:
FlipnFill
AND
Flip&Fill
IN CLASS 41
AND
CONSOLIDATED APPLICATIONS FOR A DECLARATION OF INVALIDITY
UNDER NO. 502772 AND NO. 502773
BY GRAHAM BARRIE TURNER
2
BACKGROUND AND PLEADINGS
1. Mark Hall (“the proprietor”) is the owner of the trade marks FlipnFill (“the First
Contested Mark”) and Flip&Fill (“the Second Contested Mark”) which were filed on 26
May 2018 and 23 June 2018 respectively (“the relevant dates”). The First Contested
Mark was registered on 7 September 2018 and stands registered for the following
services:
Class 41 DJ’s, musical production duo, band, singers, remixers, performing
artists, live performances, live DJ performances.
2. The Second Contested Mark was registered on 21 September 2018 and stands
registered for the following services:
Class 41 DJ mixing; DJ Band; Band Music production; DJ production; Remixer;
DJ remixer; Club DJ; Hired DJ; Dance club services; Dance events;
Dance hall services; Disc jockey services; Disc jockey services for
parties and special events; Disc jockeys for parties and special events.
3. On 15 August 2019, Graham Barrie Turner (“the applicant”) applied to have the
Contested Marks declared invalid under section 47 of the Trade Marks Act 1994 (“the
Act”). The applications are based on sections 5(4)(a) and 3(6) of the Act.
4. For his applications based upon section 5(4)(a) the applicant claims to have used
the signs FlipNFill, Flip N Fill, Flip&Fill and Flip & Fill throughout the UK since 2001
in relation to “DJ performances, sound recordings, record sleeves, record advertising,
TV advertising, record productions, radio broadcasts”. The applicant states that since
that time, the signs have been used by the parties together through a limited company
of which they were joint shareholders, and later by the applicant alone.
5. For his applications based upon section 3(6), the applicant claims that the proprietor
has registered the Contested Marks to secure payments from the applicant for use of
the marks and to damage the applicant’s business.

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