Trade mark decision

BL Number

O/049/03

Decision date

19 February 2003

Hearing Officer

Mr J MacGillivray

Mark

VODKA ELEMENTS

Classes

33

Applicant

Halewood International Limited

Opponent

Guinness UDV North America Inc

Opposition

Sections 3(1)(b); 3(1)(c); 3(1)(d); 3(3)(b) & 3(4)

Result

Section 3(1)(b) - Opposition failed.

Section 3(1)(c) - Opposition failed.

Section 3(1)(d) - Opposition failed.

Section 3(3)(b) - Opposition failed (following amendment of the specification).

Section 3(4) - Opposition failed (following amendment of the specification).

Points Of Interest

• 1. The word ELEMENTS is “elliptical in character in relation to vodka ……”

Summary

The Hearing Officer dealt with the matter first under Section 3(1)(b). He noted that the word VODKA merely described a constituent ingredient of the goods. It seemed to him however that the word ELEMENTS was “elliptical in character in relation to vodka ….”; the word was “imprecise” in relation to the identity of the contents. As a totality, he concluded, the mark VODKA ELEMENTS was ‘origin specific’ and the Section 3(1)(b) ground failed.

Under Section 3(1)(c), and applying the guidance of the ‘BABY DRY’ case, the Hearing Officer found the case no stronger than that under Section 3(1)(b) and that ground failed also. The Hearing Officer had ‘no hesitation’ in concluding that the Section 3(1)(d) ground could not be maintained in relation to the goods for which registration was sought.

The applicants had already responded to the attack under Sections 3(3)(b) and 3(4) by a limitation of the specification to read “Alcoholic beverages consisting of or containing vodka as an ingredient, all included in Class 33”, and these grounds too fell away.

NOTE, however that this application was refused as a result of a Section 5(2)(b) objection in other opposition proceedings (see BL O/050/03).

Full decision O/049/03 26Kb