Trade mark decision

BL Number
Decision date
15 March 2002
Hearing Officer
Mr M Knight
Andreas Kyrris
Unilever Plc & Birds Eye Walls Limited
Sections 5(2)(b), 5(3) & 5(4)(a)


Section 5(2)(b) - Opposition failed

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • None


The applicant’s application in Class 42 was in respect of “Catering Services for the provision of food and drink”. The opponents opposition was based on their ownership of a number of registrations in Classes 29 and 30 in respect principally of fish products and frozen products of the marks CAPTAIN BIRDSEYE, BIRDS EYE CAPTAIN BIRDSEYE, CAPTAIN, CAPTAIN’S TABLE etc, some incorporating a device of a seafaring captain and other matter. The opponents also provided details of extensive use of their CAPTAIN BIRDSEYE and device mark, also some use of CAP’N and CAPTAIN.

Under Section 5(2)(b) the Hearing Officer compared the applicant’s services with the opponents goods and decided that they were not similar. In reaching this decision the Hearing Officer accepted identical goods to those traded in by the opponents could be provided in the applicant’s catering establishments but he concluded that there would be no expectation that goods purchased in a restaurant would originate from the same source or provider as those available in a supermarket.

Even though this finding effectively decided the Section 5(2)(b) ground the Hearing Officer went on to compare the applicants CAPTAIN K and device mark with the opponents CAPTAIN BIRDSEYE and CAPTAIN marks (and variations thereof ). Even allowing for the opponents reputation in their marks and the presence of the common element CAPTAIN, the Hearing Officer decided that the respective marks were not confusingly similar. The opponents thus failed in their Section 5(2)(b) ground.

The Section 5(3) ground was dismissed because of the differences in the respective marks and the Section 5(4)(a) ground also failed because the Hearing Officer believed that the public would not be misled as to the origin of the respective goods and services.

Full decision O/122/02 PDF document58Kb