Trade mark decision

BL Number
O/051/04
Decision date
10 March 2004
Hearing officer
Mr J MacGillivray
Mark
YAKULT
Classes
29, 30, 32
Applicant
Kabushiki Kaisha Yakult Honsha
Opponent
Malaysia Dairy Industries Pte Ltd
Opposition
Sections 3(1)(b), 3(2)(b) & 5(2)

Result

Section 3(1)(b): - Opposition failed.

Section 3(2)(b): - Opposition failed.

Section 5(2): - Opposition failed.

Points Of Interest

Summary

The applicant claimed that the shape of their container was distinctive and both parties filed evidence in relation to this claim. The matter was decided in associated proceedings under BL O/050/04 where the Hearing Officer found that the shape of the container was not distinctive.

Under Section 3(1)(b) the Hearing Officer considered the totality of the mark applied for and as the word YAKULT is distinctive and appears prominently on the container, he decided that the mark as a whole was distinctive.

Under Section 3(2)(b) the Hearing Officer noted that the mark did not consist exclusively of the device of a container; it also incorporated the distinctive work YAKULT. Thus the opposition under this head must fail.

The objection under Section 5(2)(b) related to the opponent’s marks which consisted of the word VITAGEN and device of a similarly shaped container. In view of his decision under BL O/053/04 the Hearing Officer saw no need to consider this ground as the opponent accepted that they could not succeed in the light of the decision under BL O/053/04.

Full decision O/051/04 PDF document81Kb