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Eye D (Case review O/094/16 – Opposition & Invalidity)

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Eye D

This post contains a case review of O/094/16 (EYE D) Opposition – 10 February 2016; O/094/16 (EYE D) Invalidity – 10 February 2016.

Background

The matter concerns Vision Care At Home Limited (‘VCH’) and Visioncall Limited (‘VL’), both concerned with eye care passports or reports primarily aimed at care homes for the elderly to assist staff in identifying the correct glasses to be worn by those being cared for.

VCH applied to register the mark  under Application No. 3032938, as well filing a declaration of invalidity against VL’s UK Registration No. 2652006 for EYE D on the basis of Sections 47(2) and 5(4)(a) and Sections 47(1) and 3(6) of the Trade Marks Act 1994 (‘the Act’). VL later opposed VCH’s application on the basis of Sections 5(2)(b), 5(3) and 5(4)(a) and Section 3(6) of the Act.

The Hearing Officer issued the below decisions on 4 June 2015:

  1. Invalidation – failed in its entirety, Registration No. 2652006 remained valid;
  2. Opposition – partially succeeded, Application No. 3032938 was permitted to proceed to registration in respect of a reduced specification; and
  3. VL was awarded costs of £2300.

On 2 July 2015 Vision Care At Home Limited (‘VCH’) filed an appeal against the first decision, which would obviously have repercussions in respect of the second and third decisions if successful.

Grounds of Appeal

  • Section 47(1) / Section 3(6)

VCH argued that VL did not have the right to file an application for EYE D as the mark was devised by an employee of VL at an event held by VL for customers and staff. This was dismissed by the Hearing Officer on the basis that “VL had the right to file an application for a mark created by an employee of a wholly owned subsidiary”.

Further, this ground was not expressly addressed in the appeal and there was no application to amend the grounds of appeal, such that additional arguments could not be considered.

The Appointed Person confirmed the Hearing Officer’s findings that there “was no impropriety on the part of VL in applying for registration in VL’s name of the EYE D trade mark, which had been put forward by [an employee] and her group”.

  • Section 47(2) / Section 5(4)(a)

The Hearing Officer held that VL had established prior goodwill in the mark from June 2012, whereas VCH’s goodwill in its mark only began to accrue from its launch in November 2012.

VCH argued that any goodwill in VL’s mark in fact belonged to the user of the mark, Community Eyecare (UK) Limited, trading as Visioncall (‘CEL’) and not VL, meaning that VCH had the earlier goodwill and rights.

The Appointed Person held that as CEL was a wholly owned subsidiary of VL and the companies presented themselves as a single undertaking, such that there was no consumer deception and the benefit of consumer goodwill attributed to the Visioncall group (ie CEL and VL).

As an aside, it is worth noting that VL was not permitted to supply additional evidence supporting its arguments under this ground.

In view of the above, the appeal was unsuccessful and the award of cost increased to £3200.

Comment

This case highlights the need to provide all documents and arguments at the earliest possible date so as to be able to rely on them in proceedings. It is well established that additional arguments will not be considered, particularly where an application to amend the grounds of appeal has not been filed.

Charlotte Wilding 16 June 2016

[The above case review first appeared in the ITMA review – June 2016]


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