Trade mark decision

BL Number

O/376/03

Decision date

2 December 2003

Hearing Officer

Mr M Reynolds

Mark

DI GIO'

Classes

25

Applicant

Di Gio SRL

Opponent

G A Modefine SA

Opposition

Sections 5(1), 5(2)(a), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(1): - Opposition failed.

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

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

Section 5(3): - Opposition failed.

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

Points Of Interest

• 1. See also BL O/377/03 where the applicants applied for a slightly different mark.

Summary

The opponents opposition was based on their ownership of a registered community mark ACQUA DI GIO in Classes 3 and 25 and an earlier pending community mark GIO also in Classes 3 and 25. This latter mark is being opposed by the applicants in these proceedings.

The opponents also filed details of use of their marks in the form ACQUA DI GIO; ACQUA DI GIO POUR HOMME and GIO DE GIORGIO ARMANI but this use was of limited duration prior to the relevant date and appeared to be in respect of their Class 3 goods. In the light of this information the Hearing Officer decided that the opponents must fail in respect of their Sections 5(3) and 5(4)(a) grounds. As the opponents marks were clearly not identical to the applicants mark the Hearing Officer concluded that the opponents also failed on their grounds under Section 5(4) and 5(2)(a).

The essential ground of opposition was under Section 5(2)(b) where the Hearing Officer noted that identical goods were at issue. When comparing the respective marks ACQUA DI GIO and DI GIO the Hearing Officer observed that in relation to clothing the word ACQUA was unlikely to be overlooked. However, the applicants mark was encompassed within the opponents mark and while there might not be direct confusion, the Hearing Officer believed that consumers would assume that goods sold under the respective marks came from the same trade source. Opposition thus succeeded on this ground.

With regard to the opponents other mark GIO, the Hearing Officer considered that the opponents would also succeed in respect of this mark if it achieved registration in Class 25 for the goods applied for.

Full decision O/376/03 36Kb