Decon Laboratories Ltd. v Fred Baker Scientific Ltd. & Anor [2001] EWHC 57 (Ch) (13 November 2001)

Decon Laboratories Ltd. v Fred Baker Scientific Ltd. & Anor [2001] EWHC 57 (Ch) (13 November 2001)

The defendants' use of 'Decon' marks with descriptive suffixes constitutes use of an identical sign on goods within the claimant's registered specifications, resulting in infringement under section 10(1) of the Trade Marks Act 1994 and the Community Trade Mark Regulation. Even after partial revocation of the claimant's marks to limit them to non-domestic use, the defendants' products still fall within the revised specifications, and infringement is established. The claimant's marks are to be partially revoked to the extent of use for non-domestic goods only. There is no bad faith or acquiescence established by the defendants.

Citation
[2001] EWHC 57 (Ch)
Parties
Claimant: Claimant (proprietor of the trade marks in suit); First Defendant: Fred Baker; Second Defendant: Veltek
Jurisdiction
England and Wales
Judgment Date
13 November 2001
Procedural Posture
Trade Mark Infringement and Revocation Action / Judgment After Trial
Outcome
Both the action and counterclaim succeed. Claimant succeeds in infringement; defendants succeed in partial revocation for non-use.
Legal Topics
Trade Mark Infringement, Partial Revocation for Non Use, Specification of Goods, Likelihood of Confusion, Bad Faith in Trade Mark Registration, Acquiescence
Intellectual Property Trade Marks Trade Mark Infringement Partial Revocation for Non Use Specification of Goods Likelihood of Confusion Bad Faith in Trade Mark Registration 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 defendants infringed claimant's registered trade marks under section 10(1) and/or 10(2) of the Trade Marks Act 1994 and corresponding Community Trade Mark provisions
  2. 2 Whether 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 'Decon' marks with descriptive suffixes constitutes use of an identical sign on goods within the claimant's registered specifications, resulting in infringement under section 10(1) of the Trade Marks Act 1994 and the Community Trade Mark Regulation. Even after partial revocation of the claimant's marks to limit them to non-domestic use, the defendants' products still fall within the revised specifications, and infringement is established. The claimant's marks are to be partially revoked to the extent of use for non-domestic goods only. There is no bad faith or acquiescence established by the defendants.

Court Disposition

Both the action and counterclaim succeed. Claimant succeeds in infringement; defendants succeed in partial revocation for non-use.

Orders

  • Claimant's trade marks partially revoked to the extent that the specification of goods is limited to non-domestic use.
  • Declaration of infringement of claimant's marks by defendants' use of 'Decon' marks.