Trade mark decision

BL Number

O/031/02

Decision date

17 January 2002

Hearing Officer

Mr M Knight

Mark

GIANT'S

Classes

33

Applicant

Glen Catrine Bonded Warehouse Limited

Opponent

William Grant & Sons Ltd

Opposition

Sections 5(2)(b) & 5(4)(a)* *Objection was also taken to the mark under Sections 3(3)(a) and 3(6) but these were dismissed by the Hearing Officer who remarked that ‘an application for registration of a mark which is not similar to an earlier trade mark .... cannot be said to be made in bad faith or to be required to be refused for the reasons based upon Section 3(3)(a)’.

Result

Section 5(2)(b) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• 1. Comparison of the marks GIANT’S V GRANT’S

Summary

The opponents based their opposition on the use and registrations of their mark GRANT’S, registered in respect of whisky and (in one case) gin. There was no dispute that the goods at issue were identical. The matter therefore came down to a straight comparison of the marks. In this, the Hearing Officer found no aural or conceptual similarity and, despite the difference of only one letter, no visual similarity either. Taking account of ‘normal and fair use’, therefore, the Hearing Officer did not consider that there was a likelihood of confusion.

Under Section 5(4)(a) the Hearing Officer was satisfied as regards reputation and goodwill. However, in view of this finding under Section 5(2)(b) regarding the dissimilarity of the marks he did not consider that there would be misrepresentation. The Section 5(4)(a) objection therefore failed.

Full decision O/031/02 27Kb