Apax Partners Midmarket v Apax Partners LLP

This matter came before Debrett G. Lyons, a Hearings Officer of the Trade Marks Hearings, concerning an opposition to the registration of a trade mark. The Applicant sought to register a trade mark, while the Opponent nominated section 44 of the Act as its ground of opposition. The Opponent bore the onus of establishing this ground on the balance of probabilities.

The primary legal issue before the Hearings Officer was whether the Applicant's trade mark application should be rejected under section 44(2) of the Act, which requires rejection if the applicant's trade mark is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark for which registration is being sought, in respect of similar services or closely related goods, and the priority dates align. The Hearings Officer also considered whether the exceptions provided in section 44(3) of the Act, relating to honest concurrent use or other proper circumstances, might apply.

The Hearings Officer noted that no search for conflicts under section 44 had been made by the Applicant. Consequently, a search was conducted, and the Hearings Officer was advised that no conflicts were perceived under section 44. The Hearings Officer then determined that the trade mark should be registered, subject to an endorsement indicating that the provisions of paragraph 44(3)(a) and/or Regulation 4.15A(3)(a) had been applied, and after the deletion of a divisional claim. The trade mark application was to proceed to registration one month from the date of the decision, unless an appeal was filed, in which case registration would be stayed pending the appeal's outcome. The Applicant, having been successful, was awarded costs against the Opponent.