Decision Nº O/581/21 from Intellectual Property Office - (Trade market), 4 August 2021
| Judge | Dr Stylianos Alexandridis |
| Administrative Decision Number | O/581/21 |
| Date | 04 August 2021 |
| Court | Intellectual Property Office (United Kingdom) |
| Registration Number | UK00003487256 |
O/581/21
IN THE MATTER OF UK REGISTRATION
NO. 3487256 BY
ICON OFFICES LIMITED
IN RESPECT OF THE TRADE MARK:
Icon Offices
IN CLASS 36
AND
A REQUEST FOR INVALIDATION
THERETO UNDER NO. 503482
BY
ICON REAL ESTATE MANAGEMENT B.V.
Page 2 of 23
Background & Pleadings
1. The trade mark (“contested mark”) shown on the front page of this decision
stands registered in the name of Icon Offices Limited (“the registered
proprietor”). The mark was applied for on 6 May 2020 in the United
Kingdom and was registered on 4 September 2020 in respect of the
following services:
Class 36: Rental and leasing of offices.
2. Icon Real Estate Management B.V. (“the applicant”) has applied for a
declaration of invalidity against the registration under the provisions of
Section 47 and Section 5(2)(b) of the Trade Marks Act 1994 (“the Act”).
The applicant relies upon its EUTM1 registration number 18003308 for the
following (word) mark:
ICON
3. The mark was filed on 21 December 2018 and registered on 10 May 2019
for the following services in Class 36:
Class 36: Real estate portfolio management; commercial real estate
brokerage.
4. Under Section 6(1) of the Act, the applicant’s trade mark clearly qualifies
as an earlier trade mark. As it had not completed its protection procedure
more than five years before the date of the application for invalidation (or
the date on which the contested mark was filed), the applicant’s trade mark
1 Although the UK has left the EU and the EUTM relied upon by the applicant now enjoys
protection in the UK as a comparable trade mark, the EUTM remains the relevant right in
these proceedings. That is because the application for invalidity was filed before the end of
the Transition Period and, under the transitional provisions of the Trade Marks (Amendment
etc.) (EU Exit) Regulations 2019 , I am obliged to decide the opposition on the basi s of the law
as it existed before the end of the Transition Period.
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