Trade mark decision

BL Number
Decision date
17 March 2005
Hearing Officer
Mr M Foley
Nisa-Today’s (Holdings) Limited
Halewood International Limited
Sections 5(2)(b) & 5(4)(a)


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

Section 5(4)(a): - Not considered.

Points Of Interest

  • 1. The finding that alcoholic drinks in Class 33 are similar to milk based drinks in Class 29 is of interest.


The opponent owns registrations for the marks SHAKER, SHAKER’S, SHAKERS, SHAKERS SMOOTHIE and SHAKERS SMOOVIES in respect of alcoholic beverages and cocktails in Class 33. It also stated that it had used the marks SHAKERS SMOOVIE and SHAKERS SCHNAPPS in relation to the sale of alcoholic products in the UK but no evidence of sales was provided. A sample label for the product SHAKERS SMOOVIE showed the contents to include white rum, blackcurrant, raspberry and milk.

The applicant proposed to use its SHAKERS mark in respect of “Milk beverages, milk shakes and flavoured milks, not containing alcohol. The applicant provided dictionary references for SHAKE and SHAKER and submitted that SHAKER might be taken as a reference to milk shake but in relation to alcoholic products would most likely be seen as a reference to a cocktail shaker.

At the outset to the hearing the opponent sought to add additional grounds under Sections 3(1)(c) and 5(3) because of comments made in the applicant’s submissions. The Hearing Officer rejected the request because it had been made at such a late stage in the proceedings. In addition the opponent had filed no evidence to support the allegation of descriptiveness under Section 3(1)(c) or any evidence of use of its marks to show that it could sustain a ground of objection under Section 5(3).

Under Section 5(2)(b) the Hearing Officer accepted that identical and similar marks were at issue and went on to compare the respective goods. In view of the fact that certain cocktails are made with milk as an ingredient, and could be made available to the consumer pre-mixed, the Hearing Officer concluded that the alcoholic – non-alcoholic factor was insufficient to distinguish milk based beverages as to their nature or the way in which the products are used. The Hearing Officer went on to conclude that the respective goods were similar and that taking an overall view of the matter the public could be deceived as to origin. Opposition succeeded on this ground.

The Section 5(4)(a) ground was not considered but the Hearing Officer observed that it was unlikely to have succeeded because of a lack of evidence to show the opponent had a reputation and goodwill in its marks.

Full decision O/070/05 PDF document122Kb