Trade mark decision

BL Number: O/158/04
Decision date: 4 June 2004
Hearing Officer: Dr W J Trott
Mark: DEVICE ONLY MARK
Classes: 18
Applicant: Alami International Limited
Opponent: Martell & Co
Opposition: Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b) - Opposition failed

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

A party has a right to a Hearing and a request for a Hearing cannot reasonably be penalised by an award of additional costs. Costs awarded from normal scale.

Summary

The opponent based its opposition on its ownership of a prior mark made up of the components MARTELL, GRAND NATIONAL and a device of a horse and rider jumping within a horseshoe device. This registration covered a range of classes including Class 18 so identical goods as those of the applicant are at issue.

The opponent also claimed a reputation in its mark in connection with its sponsorship of the Grand National which it has sponsored since 1992. From the evidence presented the Hearing Officer was unable to conclude that its mark had acquired an enhanced reputation or that it was well known. He did accept that the opponent had a reputation in its MARTELL mark but this did not assist them in these proceedings.

The applicant also filed evidence but it did not satisfy the Hearing Officer that there had been use prior to the filing of its application.

Under Section 5(2)(b) the Hearing Officer compared the respective marks. While he accepted that there were some similarities in the respective devices he considered that the presence of the words MARTELL and GRAND NATIONAL in the opponent’s mark meant there was unlikely to be any confusion.

Under Section 5(3) the Hearing Officer considered that the opponent failed at the outset for want of reputation in its mark.

Under Section 5(4)(a) – Passing Off – the Hearing Officer accepted that the opponent was well known as a sponsor of the Grand National but any use of the mark relied upon had been mainly in relation to promotional items and in any case the respective marks were not considered to be similar. Opposition also failed on this ground.

Full decision O/158/04 135Kb