Trade mark decision

BL Number

O/002/03

Decision date

2 January 2003

Hearing Officer

Mr M Knight

Mark

FRUBETTO

Classes

30

Applicants

Societe Des Produits Nestle SA

Opponents

Sodiaal International - Societe Des Diffusion Internationale Agro Alimentaire

Opposition

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

Result

Section 5(2)(b) - Opposition failed

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• Evidence of use : As in many other cases there is no doubt that the opponents had genuine and significant use but the evidence filed was insufficiently focussed to establish that they had a reputation in their mark.

Summary

The opponents opposition was based on three registrations of their mark FRUBES in Class 29. The Hearing Officer established that some of these goods were very similar (Section 5(2)(b)) and some dissimilar (in the context of Section 5(3)). The opponents also filed details of use of their mark FRUBES essentially in relation to fromage frais deserts from 1996 onwards and turnover was significant, reaching £7m per annum by the year 2000. However, this use was not put into context by way of market share etc so the Hearing Officer was unable to assume that the opponents had a reputation in their mark at the relevant date.

Under Section 5(2)(b) the Hearing Officer determined that very similar goods were at issue and went on to compare the respective marks FRUBETTO and FRUBES. While the Hearing Officer accepted that there was some visual and aural similarity because the respective marks had the same first five letters he thought they were different conceptually in that the opponents mark appeared to be an invented word whereas the applicants mark looked and sounded like an Italian surname. Overall the Hearing Officer considered that the respective marks were not confusingly similar and he thought there was no likelihood of confusion of the public.

The Hearing Officer accepted that the opponents mark was a distinctive mark but that distinctiveness was not enhanced through use for the reasons stated previously.

The Hearing Officer dealt shortly with the grounds under Sections 5(3) and 5(4)(a) because he did not accept that the evidence filed showed that the opponents had a reputation in their mark and because he had already decided under Section 5(2)(b) that the respective marks were not confusingly similar.

Full decision O/002/03 71Kb