Trade mark decision

BL Number

O/132/04

Decision date

11 May 2004

Hearing Officer

Mrs A Corbett

Mark

LAMBRELLA

Classes

33

Applicant

Incorporated Beverages (Jersey) Ltd

Opponent

Halewood International Ltd

Opposition

Sections 5(2)(b) & 5(4)(a)

Result

Section 5(2)(b) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

• 1. Request to amend pleadings at the hearing refused

Summary

The applicant quoted two registrations in its grounds of opposition but eventually it replied upon the mark LAMBRINI which is registered for a range of alcoholic drinks in Class 33. This mark has been extensively used in relation to sherry and sparkling wines from 1994 onwards and widely promoted. The Hearing Officer accepted that the opponent’s mark had an enhanced reputation at the relevant date, because of the use made of it.

The applicant also claimed use of their mark from 1998 onwards and referred to proceedings commenced in the High Court by the opponent, but this action had not been pursued.

At the outset of the Hearing the applicant asked for leave to amend its counterstatement to include acquiescence and estoppel but this request was refused because of its lateness, lack of reasons as to why it had not been made earlier and because acceptance would have led to the need for further evidence rounds.

Under Section 5(2)(b) the only matter for decision was a comparison of the respective marks LAMBRINI and LAMBRELLA. In comparing the marks the Hearing Officer took account of the fact that the prefix LAM is used by others as firms try to get close to the name 'Lambrusco wine'. In the instant case the Hearing Officer decided that the respective marks were visually, aurally and conceptually different and that there was no likelihood of confusion. Opposition failed on this ground.

As the respective marks were considered to be not similar, the ground under Section 5(4)(a) – Passing Off – also failed.

Full decision O/132/04 53Kb