Trade mark decision

BL Number
O/309/04
Decision date
11 October 2004
Hearing officer
Mr G Salthouse
Mark
DEVICE ONLY
Classes
01, 03
Applicant
Henkel KgaA
Opponent
Unilever Plc
Opposition
Sections 3(1)(b); 3(1)(c); 3(1)(d) & 3(6)

Result

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

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

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

Section 3(6): Opposition successful.

Points Of Interest

  • 1. 3D marks: colour combinations and shapes not distinctive in the prima facie case.
  • 2. Bad faith: intention to use marks: prima facie case established and not adequately answered.

Summary

This was one of two closely related actions involving the same parties and heard on the same day. The other is set out in BL O/311/04.

The marks were three dimensional items, soap, washing or laundry tablets.

The Hearing Officer addressed first the ground of opposition under Section 3(1)(b), by which it was alleged that the marks were devoid of any distinctive character. The applicant claimed that the inclusions of the colours, either as layers or as inserts of various shapes, made the marks distinctive. The Hearing Officer, however, having reviewed the matter concluded that the public would need to be educated before they would view these as origin specific. Prima facie, the marks were not distinctive and the opposition under Section 3(1)(b) succeeded accordingly. Under Section 3(1)(c), however, the Hearing Officer concluded that the shapes and colour combinations could be distinctive and the opposition on that ground failed. There was nothing in the evidence to show that the colour combinations, shapes and patterns were used by others in the industry, and the Section 3(1)(d) opposition failed also.

Under Section 3(6), the opponent had alleged that the applicant had no intention of using the marks. The Hearing Officer, noting the sheer number of marks applied for over a thirty month period, held that a prima facie case had been established and had not been adequately rebutted. The Section 3(6) objection succeeded.

Full decision O/309/04 PDF document118Kb