Trade mark decision

BL Number
Decision date
17 January 2006
Hearing Officer
Mrs A Corbett
29, 30, 32
Sunjuice Limited
A McLelland & Son Limited
Section 5(4)(a)


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

Points Of Interest

  • 1. The opponent has filed evidence of significant use but did not support this use with the necessary detail to substantiate its ground under Section 5(4)(a) - Passing Off.


These proceedings relate to seven separate applications and, despite opposition by the opponent, have been consolidated. Only one set of evidence was filed by each of the parties and only one decision has been issued.

The opponent owns registrations of a device of a cheese press above the words SERIOUSLY STRONG and one registration in Class 29 consisting of the words SERIOUSLY STRONG CHEDDAR, a small device of a cheese press and the word McLELLAND, all within a circular label. An application has been filed for registration of the mark SERIOUSLY STRONG and is still pending. The opponent filed significant evidence of use for the period 1996-2002 of its SERIOUSLY STRONG trade mark and claimed that it has a 19% of the cheese market. Much of the surrounding promotional material post-dated the date of the proceedings but the opponent claimed expenditure of £100k-£200k per annum on advertising and promotion.

The applicant filed extracts from the internet showing use of the word SERIOUSLY as an adverb in relation to food.

In considering the evidence before her, the Hearing Officer noted that the opponent relied on five trade marks but the evidence does not specify use in respect of the various marks. The only goods referred to in the evidence is cheddar cheese and the evidence refers to the words SERIOUSLY STRONG. Overall the Hearing Officer accepted that the opponent had a reputation in marks consisting of or containing the words SERIOUSLY STRONG but there is no evidence in relation to specific marks and no evidence to say how such marks are viewed by the public. Overall the Hearing Officer concluded in the context of Section 5(4)(a) that the opponent had not established that, at the relevant date, it had a reputation in relation to any of the individual marks it relied on. Therefore, the opposition must fail.

The Hearing Officer went on to comment that the words SERIOUSLY STRONG are normal descriptive words and were somewhat different from the marks in suit which do not appear so descriptive.

Full decision O/014/06 PDF document62Kb