Trade mark decision

BL Number
O/284/04
Decision date
21 September 2004
Hearing officer
Mr G Salthouse
Mark
DEVICE ONLY
Classes
30
Applicant
Mars U.K. Limited
Opponent
Ludwig Schokolade GmbH & Co. KG
Opposition
Sections 1(1) & 3(1)(a) & (b) & 3(2)(c)

Result

Sections 1(1) & 3(1)(a): - Opposition failed.

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

Section 3(2)(c): Not considered.

Points Of Interest

Summary

The opponent in this case is a German manufacturer of confectionary products including chocolate bars and it claimed to have provided chocolate bars of a similar shape and style from 1990 onwards to a number of UK firms such as Aldi, Asda and Iceland who sell them under various inhouse marks.

The opponent claimed the applicant’s mark was not distinctive and that the evidence filed in support of the application was obtained some years after the filing date of 4 October, 1995.

The mark in suit proceeded to advertisement on the basis of distinctiveness acquired through use. The BOUNTY bar has been produced since 1951 and there has been massive sales and promotion of this product since that date. It is in fact a market leader in relation to chocolate bars filled with coconut. The opponent also filed the results of two market surveys which showed that the chocolate bar is widely recognised by the general public as being a BOUNTY bar.

Under Section 1(1) and 3(1)(a) the Hearing Officer decided that the mark in suit was in theory registrable if the applicant was able to educate the public to see the shape and decoration as a trade mark denoting only its goods or services. Opposition failed on this ground.

Under Section 3(1)(b) the Hearing Officer decided that the mark in suit was not acceptable in the prima facie and went on to consider the evidence filed in support of the application. As regards the sale of BOUNTY products and their promotion, the Hearing Officer noted that neither the packaging nor the promotional literature showed the mark in suit. Also the survey evidence was flawed to some extent in that not all the responses were recorded but were simply coded. In addition the public were shown a bar of BOUNTY chocolate (without the wrapper) and a photograph of the mark in suit and this is not how the goods are in fact selected. In reality the goods are sold in wrappers with the mark BOUNTY thereon and thus the normal customer would not in fact see the claimed mark at the time of purchase. There would certainly be no selection by shape. Overall the Hearing Officer considered that the applicant had failed to satisfy the proviso of Section 3(1) of the Act.

Full decision O/284/04 PDF document46Kb