Decon Laboraties Ltd v. Fred Baker Scientific Ltd, Veltek Associates Ltd [2000] EWHC Ch 57 (12th October, 2000)

Decon Laboraties Ltd v. Fred Baker Scientific Ltd, Veltek Associates Ltd [2000] EWHC Ch 57 (12th October, 2000)

The defendants' use of the 'Decon' mark with suffixes constitutes use of an identical sign on identical goods within the meaning of section 10(1) of the Trade Marks Act 1994 and the Community Trade Mark Regulation. The claimant's registrations should be partially revoked to limit the specification of goods to 'all for non-domestic use' to reflect actual use, but infringement still occurs under the revised specification. There is no bad faith in the Community Trade Mark registration and no acquiescence by the claimant.

Citation
[2000] EWHC Ch 57
Parties
Claimant: Claimant (proprietor of the trade marks in suit); First Defendant: Fred Baker; Second Defendant: Veltek
Jurisdiction
England and Wales
Procedural Posture
Trade Mark Infringement and Revocation Action / Judgment After Trial
Outcome
Both the action and counterclaim succeed.
Legal Topics
Trade Mark Infringement, Partial Revocation for Non Use, Specification of Goods, Likelihood of Confusion, Bad Faith, Acquiescence
Intellectual Property Trade Marks Trade Mark Infringement Partial Revocation for Non Use Specification of Goods Likelihood of Confusion Bad Faith Acquiescence

Case Brief

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Parties

Claimant (proprietor of the trade marks in suit)

Claimant

Fred Baker

First Defendant

Veltek

Second Defendant

Procedural Posture

Trade Mark Infringement and Revocation Action / Judgment After Trial

Legal Issues

  1. 1 Whether the defendants infringed the claimant's registered trade marks under section 10(1) and 10(2) of the Trade Marks Act 1994 and the Community Trade Mark Regulation
  2. 2 Whether the claimant's trade marks should be partially revoked for non-use under section 46(1)(a) of the 1994 Act and Article 50(1)(a) of the Regulation
  3. 3 Whether the Community Trade Mark should be revoked for bad faith under Article 51(1) of the Regulation

Ratio Decidendi

The defendants' use of the 'Decon' mark with suffixes constitutes use of an identical sign on identical goods within the meaning of section 10(1) of the Trade Marks Act 1994 and the Community Trade Mark Regulation. The claimant's registrations should be partially revoked to limit the specification of goods to 'all for non-domestic use' to reflect actual use, but infringement still occurs under the revised specification. There is no bad faith in the Community Trade Mark registration and no acquiescence by the claimant.

Court Disposition

Both the action and counterclaim succeed.

Orders

  • Declarations of infringement of the claimant's trade marks as limited to non-domestic use.
  • Partial revocation of the claimant's UK trade mark registrations to limit the specification of goods to 'all for non-domestic use'.