Trade mark decision

BL Number
O/069/05
Decision date
10 March 2005
Hearing Officer
Mr M Knight
Mark
CIFUENTES
Classes
34
Applicants/Registered Proprietor
Partagas y Cia SA
Opponents/Applicants for a declaration of invalidity
General Cigar Co Inc
Opposition and application for Invalidation
Opposition, Section 5(2)(b) Invalidation, Section 47(2) (citing Sections 5(1) & 5(2)(b))

Result

Opposition Section 5(2)(b): - Failed.

Invalidation Section 47(2) (citing Sections 5(1) & 5(2)(b)) - provisionally successful.

Points Of Interest

  • 1. Disclaimers : effects of, pre and post registration.

Summary

The opposition/invalidation was based on a registration of CIFUENTES WINKS (the CIFUENTES element of which was disclaimed) and an application for the word CIFUENTES, solus. Before deciding whether these marks were identical, or similar, the Hearing Officer had first to consider the matter of the effect of disclaimers.

The registered proprietor/applicant for registration challenged the correctness of the Registry's practice in relation to disclaimers and asked for the matter to be referred to the ECJ for clarification. After a careful review of the matter and the relevant jurisprudence the Hearing Officer upheld the present practice and declined to seek clarification since, in his view, the matter was already clear.

Turning to the opposition proceedings the Hearing Officer had only the respective marks to consider, the goods being identical. These were CIFUENTES (applicant) v CIFUENTES WINKS. Applying the disclaimer practice however, the comparisons were between CIFUENTES and WINK. There was no likelihood of confusion and the opposition failed.

In the invalidation proceedings, however, the clash was between the registered CIFUENTES label mark and the applicant for invalidation's mark CIFUENTES (not yet registered but senior to the label mark). The Section 5(1) ground was dismissed as the marks were clearly not identical. There was no disclaimer of CIFUENTES in this case however and the Hearing Officer found a likelihood of confusion under Section 5(2)(b). The application for invalidation succeeded accordingly but the Hearing Officer stayed the implementation of this part of his decision, as the basis for the success was an application for registration, the eventual fate of which was unknown. The Registry might refuse it or the registered proprietor might oppose it.

Both sides having had a measure of success the Hearing Officer made no award of costs.

Full decision O/069/05 PDF document142Kb