Decon Laboratories Ltd v Fred Baker Scientific Ltd and Another
| Jurisdiction | England & Wales |
| Judgment Date | 13 November 2000 |
| Date | 13 November 2000 |
| Court | Chancery Division |
CHANCERY DIVISION
Before Mr Justice Pumfrey.
Trade marks - EC and UK marks - whether to be revoked for non-use
Since the applicant for the registration of a European Community trade mark was not obliged to demonstrate use of the mark in the first five years after registration and was not obliged to support the application for registration with a statement that he had a bona fide intention to use the mark, only in exceptional circumstances would a European Community trade mark court revoke an EC trade mark on the basis that the applicant had had no bona fide intention of using the mark.
Mr Justice Pumfrey so held in a reserved judgment in the Chancery Division, when (i) allowing the claim of Decon Laboratories Ltd against the defendants, Fred Baker Scientific Ltd and Veltek Associates Ltd, for infringement of its UK Registered Trade Marks 1468479 and 1438952, which referred to "cleaning and decontaminating substances and preparations" and "sanitary substances; disinfectants; sterilising substances and preparations" respectively, and EC Trade Mark 57794, which covered both categories referred to above as well as "apparatus for the cleaning and/or processing for the cleaning and/or processing of laboratory, industrial or medical apparatus, materials, chemicals, glass or the like articles", and (ii) allowing the counterclaim of the defendants for partial revocation of the two UK trade marks on the ground of their non-use, thereby limiting the specification of the goods to general purpose cleaning agents, excluding cleaning agents which complied with the relevant US standards for use in aseptic sterile clean room areas.
Mr Thomas Moody-Stuart for the claimant; Mr Douglas Campbell for the defendants.
MR JUSTICE PUMFREY said that there was no serious doubt that there was infringement under section 10(1) of the Trade Marks Act 1994.
The only live issue on the alternative question of infringement under section 10(2) of the 1994 Act concerned whether the marks were sufficiently similar that there existed a likelihood of confusion on the part of the public which was to be assessed globally: see Lloyd Schuhfabrik Meyer and Co GmbH v Klijssen Handel BV (Case C-342/97)UNK((2000) FSR 77).
However, section 46(5) of the 1994 Act expressly provided for partial revocation of a mark where grounds for revocation existed in respect of only some of...
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