Trade mark decision

BL Number
O/162/00
Decision date
5 May 2000
Hearing Officer
Mr M Knight
Mark
MINTON
Classes
32
Applicant
Minton Spring Water Co Ltd
Opponent
Royal Doulton UK Ltd
Opposition
Sections 4(1), 5(3) & 5(4)(a)

Result

Section 4(1)(a) - Opposition successful

Section 4(1)(d) - Opposition failed

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • None

Summary

Having determined that the comparison required to be made under Section 4 was to be distinguished from that under Section 5, the Hearing Officer proceeded to find that although the applicant’s trade mark as a whole would not allude to Royal patronage or authorisation (and thereby infringe Section 4(1)(d)), the unicorn element in that mark so nearly resembled the armorial bearing of the unicorn in the Royal arms that it was likely to be mistaken for it. Opposition under Section 4(1)(a) therefore succeeded.

Under Section 5(3), the Hearing Officer found the evidence in this case to fall well short of establishing use by the applicant of the mark in suit to be without due cause, particularly since that mark reflected the family name of its founder. Moreover, whilst he further found that the opponent’s various MINTON trade marks were widely recognised, their long-established reputation in the market place was for china and ceramics, and they failed to demonstrate that the general public would associate the mark in suit (in respect of mineral waters) with their trade marks, or that the applicant’s use of the mark in suit would either take unfair advantage of the opponent’s marks or be likely to damage either the distinctiveness or the reputation which those marks enjoyed. Opposition on this ground therefore failed.

Under Section 5(4)(a), the Hearing Officer in applying the usual case law found no risk of misrepresentation, given that the respective fields of activity were so far apart. He further distinguished the circumstances of this case from those considered in LEGO [1983] FSR 155 (in respect of opponent’s loss of ability to license goods sold under their marks), and in Tattinger SA v Allbev Ltd [1993] FSR 641 (dilution of opponent’s reputation). Opposition on this ground therefore failed.

Full decision O/162/00 PDF document59Kb