Trade mark decision

BL Number
Decision date
27 April 2005
Hearing Officer
Mr G Salthouse
Fratelli Martini Secondo Luigi S.p.A.
Distillerie Fratelli Ramazotti S.p.A.
Sections 5(2)(b), 5(3) & 5(4)(a)


Section 5(2)(b): - Opposition failed.

Section 5(3): - Opposition failed.

Section 5(4)(a): - Opposition failed.

Points Of Interest


The opponent owned three registrations of the marks CANEI, PEACHCANEI and CANEI (in script) VINO FRIZZANTE DOLCE in Class 33 in respect of wines. Thus identical and similar goods as those of the applicant were at issue.

The opponent filed evidence of use of its marks and the Hearing Officer accepted that it had some goodwill and reputation in its marks CANEI and CANEI (in script). Such use as had occurred in respect of the PEACHCANEI mark was modest in the extreme and was insufficient to establish a goodwill and reputation.

The applicant also filed evidence of use but as this use occurred after the date of application it was of no assistance in these proceedings. The applicant also filed evidence as to the nature of the opponent's goods which it claimed was a wine based cocktail in the nature of an alco pop and submitted that as its goods were wines, the respective goods were different.

Under Section 5(2)(b) the Hearing Officer noted that he had to compare the respective specifications and this meant that identical and similar goods were at issue. The Hearing Officer then went on to compare the applicant's mark CANTI with the opponent's marks and concluded that while there was some visual and aural similarity, overall the respective marks were not confusingly similar. Opposition thus failed on this ground.

Under Section 5(4)(a) – Passing Off – the Hearing Officer noted that the opponent had only shown that it had goodwill and reputation in its CANEI and CANEI (in script) mark and these two marks were the basis of its ground under this section. In view of his decision under Section 5(2)(b) that the respective marks were not confusingly similar in respect of identical goods, and in the absence of any evidence from the public as to the likelihood of confusion in a passing-off context, the Hearing Officer concluded that the opponent must fail on this ground.

The opponent also failed on the Section 5(3) ground since its use of its CANEI marks in the context of the drinks industry as a whole was very modest and therefore its goodwill and reputation in its marks was not great. Also the respective marks had been found to be dissimilar under Section 5(2)(b) where similar goods were involved. In this case the ground related to dissimilar goods and must fail.

Full decision O/120/05 PDF document61Kb