Knowledge of prior use leads to cancellation of PENETRON

In ICS/Penetron International Limited v Patent and Trademark Appeal Board (Case V-83-03, November 2 2004), the Maritime and Commercial Court has ordered the cancellation of the PENETRON mark for concrete coating materials.

In 1983 Robert Revera and Thorkild Wyke founded International Coatings Systems Inc (ICS) in the United States to manufacture and sell concrete coating products under the trademark PENETRON. Revera and Wyke parted company in 1990 without any agreement as to the future use or ownership of the PENETRON mark.

Revera continued to manufacture and sell coating materials in the United States through the ICS company (renamed ICS/Penetron International Ltd) under the PENETRON mark, which he registered with the US Patent and Trademark Office on September 8 1992. Wyke also carried on selling coating products in Europe and, to a much lesser extent, the United States, under names such as Penetron, Penetron Systems and Penetron Waterproofing System. He registered a PENETRON mark in Denmark in 1997.

The concurrent use of the mark came to light in 1999 when both ICS/Penetron International Ltd and Wyke offered their products to a construction project in Sweden. ICS/Penetron International Ltd subsequently filed a cancellation action against the Danish registration of PENETRON. However, the Patent and Trademark Appeal Board rejected the cancellation petition after ruling that Section 15(3)(3) of the Danish Trademarks Act was not violated. That provision implements Article 4(4)(g) of the Community Trademark Directive, which states that a mark may not be registered if an identical mark (i) is in use abroad, and (ii) the applicant has or ought to have knowledge of the existence of the foreign mark.

On appeal, the Maritime and Commercial Court reversed. It found that Wyke, as a former co-owner and later competitor of ICS/Penetron International Ltd, must have known of the existence of the US registration of the PENETRON mark. Accordingly, the court held that Wyke had applied for the Danish registration unlawfully and the registration must be deleted from the register.

Wyke did not appeal.

Christian Levin Nielsen, Zacco Advocater, Copenhagen