Trade mark decision

BL Number
Decision date
17 January 2002
Hearing Officer
Mr M Knight
Glen Catrine Bonded Warehouse Limited
William Grant & Sons Ltd
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)’.


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


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 PDF document27Kb