Imperial Tobacco Ltd v Berry Bros & Rudd

Date

31 October 2001

Legislation

Trade Marks Act 1994, s. 5

Keywords

registration; tobacco; spirits; use outside UK; extent of reputation

Counsel

James Mellor, Guy Tritton

Solicitors:

Ashurst Morris Crisp; John Lewis

Judge:

Jacob J.

Court:

High Court (Chancery Division, Patents Court)

Reported:

unknown

Summary:

An application for registration of the mark CUTTY SARK for tobacco was opposed under section 5(2)(b) of the Trade Marks Act 1994 on grounds of a prior registration of a device mark consisting of a label of a picture a ship together with the words 'CUTTY SARK' and 'blended scotch whisky', registered in respect of "smokers' articles included in class 34".

Decision:

It was held that notwithstanding that virtually all evidence of use of the opponent's mark was evidence of use outside the UK, it was sufficient to place the burden of proof on the applicant to show that the mark had no reputation in this country.

Moreover, there was not only a sufficient connection between "smokers' articles" and "tobacco", but also a natural association between 'spirits' and 'tobacco'. This was sufficient to dispose of the applicant's argument that the opponent's mark was in substance merely a promotional mark for whisky. The opposition was upheld.