Decision Nº O/565/19 from Intellectual Property Office - (Trade market), 25 September 2019
| Judge | Mrs T Perks |
| Administrative Decision Number | O/565/19 |
| Date | 25 September 2019 |
| Registration Number | UK00003302758 |
| Court | Intellectual Property Office (United Kingdom) |
O/565/19
IN THE MATTER OF APPLICATION NO. 3302758
BY LUKE WADEY TO REGISTER
Dorset DPC
AS A TRADE MARK IN CL ASS 37
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 413238
BY PROKIL HOLDINGS LIMITED
Page 2 of 24
BACKGROUND AND PLEADINGS
1. On 10 April 2018, Mr Luke Wadey (“the applicant”) applied to register the trade mark
Dorset DPC in the UK. The application was published for opposition purposes on 27
April 2018. The applicant seeks registration for the following services:
Class 37: Damp proofing services; Services for the damp proofing of buildings
during construction.
2. The application was opposed by Prokil Holdings Limited (“the opponent”). The
opposition is based upon Sections 3(1)(c) and 3(1)(d) of the Trade Marks Act 1994
(“the Act”).
3. Under section 3(1)(d), the opponent claims that the abbreviation ‘DPC' is a
commonly used abbreviation in the damp control trade for 'Damp Proof Course’ and/or
'Damp Proof Control’ and that the abbreviation is used by many traders in the relevant
trade. It claims that the mark “will essentially be viewed by the damp control/ damp
proofing trade as 'Dorset Damp Proof Control, or 'Dorset Damp Proof Course'” and
that “if the mark proceeds to registration, it will allow the applicant to have a monopoly
over the words 'Dorset DPC', which may unfairly restrict third parties in the trade
from using the term "Dorset DPC' or arguably 'Dorset Damp Proof Course', even if
such a third party is offering damp proof course services in the Dorset area.”
4. Under Section 3(1)(c), the opponent further contends that as a result of or in addition
to the applicant's mark being a sign or indication which has become customary in the
current language or in the bona fide and established practices of the damp control
trade, it also offends Section 3(1)(c) of the Act as a sign which may serve to
designate the kind, intended purpose and geographical origin of the services in
question.
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