Trade mark decision

BL Number
O/179/05
Decision date
24 June 2005
Hearing Officer
Mr M Reynolds
Mark
GATAO VINHO VERDE
Classes
33
Applicant
Sociedade dos Vinhos Borges S.A.
Opponent
Vina San Pedro S.A.
Opposition
Sections 5(2)(b) & 5(4)(a)

Result

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

Section 5(4)(a): - Opposition partially successful; specification limited to Vinho Verde wines

Points Of Interest

  • 1. Comparison of the marks GATO v GATÃO and device of a cat.
  • 2. Section 5(4)(a); limitation of specifications to reflect actual use.

Summary

The opposition was based on the opponent's marks GATO, GATO BLANCO and GATO NEGRO, registered in respect of wines in Class 33. The applicant was the proprietor of two other GATÃO and cat device UK registrations, each older than those cited by the opponents, and claimed use of those marks in the UK pre-dating the opponent's use.

The goods being identical the Hearing Officer proceeded at once to a comparison of the marks GATO v GATÃO and device of a cat. In the result the Hearing Officer found no likelihood of confusion and he recorded that he was influenced in this finding by the importance of visual considerations in the purchase of wines and "the strongly visual character of the applied for mark": the device of a cat was prominent in the mark applied for. The opposition under Section 5(2)(b) failed accordingly.

Under Section 5(4)(a) the opponent claimed to have used the marks GATO BLANCO & GATO NEGRO since 1993 on labels bearing the device of a cat. The Hearing Officer was satisfied that both sides had been using their marks, incorporating cat devices, in a small way, for a number of years. He also noted that the applicant's use had been in respect of wines form the Vinho Verde Appellation of Origin and he directed that the present application should be so limited.

Full decision O/179/05 PDF document94Kb