Decision Nº O/776/19 from Intellectual Property Office - (Trade market), 18 December 2019
| Judge | Mrs J Pike |
| Administrative Decision Number | O/776/19 |
| Registration Number | WO0000001243627 |
| Court | Intellectual Property Office (United Kingdom) |
| Date | 18 December 2019 |
O/776/19
TRADE MARKS ACT 1994
IN THE MATTER OF THE REQUEST FOR PROTECTION IN THE UK OF
INTERNATIONAL REGISTRATION NO. 1243627
IN THE NAME OF ABANCA CORPORACIÓN BANCARIA, S.A. FOR THE TRADE
MARK
IN CLASSES 9, 16, 35, 36, 38, 40, 41, 42 AND 45
AND
THE OPPOSITION THERETO UNDER NUMBER 405507
BY
ABANKA d.d.
Page 2 of 31
Background
1. On 2 October 2014, Abanca Corporación Bancaria, S.A. (“the holder”) requested
protection in the UK for international trade mark registration (“IR”) 1243627, shown
on the cover page of this decision, claiming an international priority date in Spain
from 8 May 2014. The IR covers goods and services in classes 9, 16, 35, 36, 38,
40, 41, 42 and 45.
2. The request for protection of the IR was published for opposition purposes in the
Trade Marks Journal, on 21 August 2015. It was partially opposed in classes 9, 16,
35, 36 and 38 under section 5(2)(b) of the Trade Marks Act 1994 (“the Act”) by
Abanka d.d. (“the opponent”). The opponent relies on two earlier international
registrations, in classes 35, 36 and 38:
(i) 860561
(ii) 860632
3. The holder filed a defence and counterstatement, denying all of the grounds. It
put the opponent to proof of use of its earlier IRs and also applied to have the
opponent’s earlier IRs revoked on the grounds of non-use. The revocation
proceedings were consolidated with the opposition and the Intellectual Property
Office (“IPO”) issued a decision in which the revocation applications succeeded in
full1. As a result, there was no basis for the opposition, which consequently failed.
The opponent appealed to the High Court. On appeal, Mr Daniel Alexander QC,
1 BL O/562/17
To continue reading
Request your trial