Trade mark decision

BL Number
Decision date
16 July 2003
Hearing Officer
Mr J MacGillivray
Mr Muhammad Sarmad t/a Kennedy Fried Chicken
Kentucky Fried Chicken (Great Britain) Ltd
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

  • 1. The opponent appealed the Hearing Officer's decision to the Appointed Person. In his decision dated 30 July 2004 (BL O/227/04) the Appointed Person allowed the appeal and refused the applicant's application under Section 5(2)(b).


The opponent's opposition was based on their ownership of a registration of the mark KENTUCKY FRIED CHICKEN (and a number of variations thereof). The opponent also filed evidence of use to show that they had a reputation in their mark and they filed survey evidence in an attempt to show that the public would associate ownership of the two marks.

The applicant also filed evidence of use in respect of a single outlet with use dating back to 1987. The present owner acquired the business in 1994.

Under Section 5(2)(b) it was common ground that identical services were at issue and the Hearing Officer went on to compare the respective marks KENNEDY FRIED CHICKEN and KENTUCKY FRIED CHICKEN. Essentially the comparison was between KENNEDY and KENTUCKY because of the descriptive nature of the words FRIED CHICKEN, and the Hearing Officer decided that they were visually, aurally and conceptually different. Overall, therefore, there was no likelihood of confusion and the opposition failed under Section 5(2)(b).

Under Section 5(4)(a) – Passing Off – The Hearing Officer also considered the opponent's survey evidence and a claim that the applicant was using the opponent's corporate colours of red and white. Having considered the survey evidence which purported to show that in excess of 20% of the public would assume that ownership of the respective marks were associated, the Hearing Officer considered that the survey evidence was flawed in that the public were asked a question which they would not normally consider. It could thus not be relied upon. As regards the colours or get-up used by the respective businesses, the Hearing Officer noted that the opponents had not shown that they had a monopoly in the colours red and white and thus this aspect of their case was not strong.

In use other elements were used with the respective marks and therefore compared as wholes they were not similar. It followed that the opponent also failed on the Section 5(4)(a) ground.

As the opponent could be in no better position under Section 5(3), as compared to Sections 5(2)(b) and 5(4)(a), they also failed on that ground.

Full decision O/204/03 PDF document236Kb