Trade mark decision
- BL Number
- O/139/00
- Decision date
- 20 April 2000
- Hearing Officer
- Mr M Foley
- Mark
- COFFEE EXPRESS
- Classes
- 30
- Applicant
- Coffee Express Ltd
- Opponents
- Anthony John Gardiner & Annelies Renate Gardiner
- Opposition
- Sections 3(1)(a), (b), (c) and (d), Sections 3(3)(a) and (b), Section 3(6) and Section 5(4)(a)
Result
Sections 3(1)(a), (b), (c) & (d) - Opposition unsuccessful
Sections 3(3)(a) & (b) - Opposition unsuccessful
Section 3(6) - Opposition unsuccessful
Section 5(4)(a) - Opposition unsuccessful
Points Of Interest
- None
Summary
The Hearing Officer took the view that whilst the individual elements of the mark in suit, including the cup and saucer device, may lack distinctive character (the word EXPRESS alluding to speed, though not to EXPRESSO coffee), the mark considered as a whole was capable of distinguishing the applicant's goods, and he accordingly dismissed the opposition under Sections 3(1)(a) to (c). Opposition under Section 3(1)(d) was also dismissed for want of relevant evidence, the Hearing Officer observing that the cited prior use of the words COFFEE EXPRESS as a trade mark or trading style, including use by the opponents, did not make them customary in the trade.
The opponents did not seek to substantiate their objection under Section 3(3)(a) that registration of the mark in suit would be contrary to public policy. In respect of their objections under Section 3(3)(b), the Hearing Officer found that (a) it was inappropriate to seek to argue under that ground that the public would be deceived due to confusion between their mark and the mark in suit, this being an absolute ground of refusal and not one concerned with parties relative rights, and that (b) no public deception would arise in the event of use of the mark on goods other than coffee or expresso coffee, since the specification under Class 30 extended to coffee-based goods and goods for use with or as an alternative to coffee and consumers would have no expectations beyond that.
The opponents also failed to substantiate their allegation under Section 3(6) of bad faith, the Hearing Officer finding in effect that there was no agreement between the parties precluding the applicant from seeking to protect its rights in its mark, aware nor not that the opponents’ rights would be protected by Section 11(3).
As for the opponents case under Section 5(4)(a) the Hearing Officer found that the applicant had already established relatively widespread goodwill and reputation under its mark by the time that the opponents commenced the use of their mark in the Cambridge area, and that notwithstanding the opponents' (modest) level of goodwill in that area there would be no misrepresentation or damage.
Full decision O/139/00 
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