Decision Nº O/777/19 from Intellectual Property Office - (Trade market), 18 December 2019
| Judge | Mrs J Pike |
| Administrative Decision Number | O/777/19 |
| Date | 18 December 2019 |
| Registration Number | WO0000000860561, WO0000000860632 |
| Court | Intellectual Property Office (United Kingdom) |
O/777/19
CONSOLIDATED PROCEEDINGS
IN THE MATTER OF INTERNATIONAL REGISTRATION NOS.
860632 AND 860561
IN THE NAME OF ABANKA d.d.
And
IN CLASS 36
AND
THE APPLICATIONS FOR REVOCATION THERETO UNDER NOS.
502030 AND 502031
BY ABANCA CORPORACIÓN BANCARIA, S.A.
Page 2 of 24
Background
1. This is the second time that international registrations (“IRs”) 860632 and 860561,
owned by Abanka d.d. (“the holder”) have been the subject of applications to revoke
them on the grounds of non-use by Abanca Corporación Bancaria, S.A. (“the
applicant”). The first applications resulted in an Intellectual Property Office (“IPO”)
decision dated 6 December 2016, which found that there had been no genuine use
in the periods alleged by the applicant.1 The IRs were revoked with effect from 7
May 2014. That decision was appealed to the High Court by the holder. Mr Daniel
Alexander QC, sitting as a Deputy Judge of the Chancery Division, allowed the
appeal in respect of one part of the class 36 specifications:
“86. It follows that I consider that the hearing officer’s analysis was too
narrowly focussed and that there was use of the mark ABANKA in the
relevant period either by Abanka or an undertaking authorised by it in respect
of the issue of Euro denominated bonds.”2
2. Mr Alexander QC directed the holder to provide a draft specification reflecting the
use shown. A further hearing was held before the deputy judge, resulting in his
second judgment.3 He stated:
“Conclusion on scope of specification
27. In my view, the appropriate specification for the mark on the basis of the
use proven is:
“Class 36: Issuing corporate bonds”.
28. The marks in issue (International Trade Mark Registrations Nos 860632
and 860561) stand revoked for all other services.”
1 BL O/572/16
2 Abanka d.d. v Abanca Corporación Banc aria, S.A. [2017] EWHC 2428 (Ch)
3 Abanka d.d. v Abanca Corporación Banc aria, S.A. [2017] EWHC 3242 (Ch)
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