Trade mark decision

BL Number
Decision date
12 September 2005
Appointed Person
Mr Geoffrey Hobbs QC
Di Gio SRL
G A Modefine SA
Section 5(2)(b)


Section 5(2)(b): - Appeal dismissed. Opposition successful.

Points Of Interest

  • 1. An important decision in relation to the English equivalents of foreign descriptive words. Likely to lead to the Registrar changing practice in the handling of such marks.


The opponent's opposition was based on its ownership of a registered community mark ACQUA DI GIO in Classes 3 and 5 and an earlier pending community mark GIO also in Classes 3 and 5. This latter mark is being opposed by the applicant in these proceedings.

In his decision dated 2 December 2003 the Hearing Officer concluded that the respective marks ACQUA DI GIO and LE SPOSE DE GIO were confusingly similar and as identical goods were at issue, opposition to the mark in suit was successful.

He also decided that opposition based on the pending mark GIO also succeeded, subject to it proceeding to registration.

In his comparison of the respective marks AQUA DI GIO and LE SPOSE DI GIO the Hearing Officer took some account of the fact that the Italian words LE SPOSE means THE BRIDES and that these words were somewhat descriptive in relation to the applicant's goods which include bridalwear and which the evidence filed confirmed was advertised in Italian magazines circulating within the UK. The applicant appealed against the Hearing Officer's decision which it claimed was flawed because it was not likely that LE SPOSE would be seen as descriptive within the UK and secondly it was not the case that the DI GIO element had been actively highlighted to consumers.

The Appointed Person considered that the treatment of English equivalents of foreign words raised important questions both as regards registrability and comparison of marks incorporating such words. Submissions were received from both parties and the Registrar and the parties asked that the matter be decided without a reference to the European Court of Justice. In the event the Appointed Person decided that no such reference was necessary.

The Appointed Person carried out a full review of the submissions from the parties and the Registrar. He then undertook a full analysis of the situation, taking into account earlier decided cases and more recent judgements of the European Court of Justice and Court decisions relating to Community Trade Mark applications.

The Appointed Person considered that depending on the words at issue different decisions might be reached in different countries and that different decisions might be reached in relation to national applications as compared to Community Trade Mark applications where the registration covers a number of countries. That said it appeared not to be permissible to give any weight to English equivalents of foreign words in testing for distinctiveness, descriptiveness or deceptiveness unless it was deemed that a significant proportion of the UK public would recognise the descriptive nature of the words in question. Likewise the descriptiveness of foreign words should not be taken into account when comparing marks containing foreign words, unless the meaning is likely to be widely recognised by the UK public.

The Appointed Person went on to compare the respective marks without taking account of any descriptiveness of the foreign words contained within the respective marks. He thought both marks would be recognised as Italian; in the case of the opponent's mark ACQUA might be recognised as meaning 'water' while DI GIO might be recognised as a name or short for a personal name. In the case of the applicant's mark LE would be recognised as meaning 'the' while SPOSE would have no meaning. Again DI GIO might be recognised as a name or short for a personal name. Taking an overall view of the respective marks the Appointed Person concluded that they were confusingly similar and that opposition succeeded.

The opposition based on the opponent's mark GIO was noted rather than decided.

Full decision O/253/05 PDF document92Kb