Trade mark decision

BL Number
O/186/03
Decision date
30 June 2003
Hearing Officer
Mr M Reynolds
Mark
ZUCCATO
Classes
42
Applicant
Etrusca Group Limited
Opponent
Zuccato Fratelli Di Zuccato Antonio Remo E Romolo S.N.C.
Opposition
Sections 5(2)(a) & 5(4)(a)

Result

Section 5(2)(a): - Opposition succeeded.

Section 5(4)(a): - Not considered

Points Of Interest

  • SOUTH BEACH CAFÉ decision (BL O/196/00) followed in relation to the similarity of Coffee (Class 30) with Café services in Class 42.

Summary

The opponents opposition was based on their ownership of a Community registration of their mark ZUCCATO for goods in Classes 29, 30 and 31. They also filed evidence to show modest use of their mark in relation, primarily, to a range of pickled fruits and vegetables. Such use did not enhance the distinctive nature of the opponents’ mark which was likely to be recognised as an Italian surname. The applicants had only a few weeks use of their mark prior to the date of the application.

Under Section 5(1)(a) the Hearing Officer had only to compare the goods covered by the opponents’ registrations in Classes 29, 30 and 31 with the applicants’ restaurant services and café services etc. The Hearing Officer covered various aspects of the alleged conflict but he was unconvinced as to the reality of such claims leading to confusion. However, he noted that the opponents included coffee within their specification in Class 30 and he considered these goods to be similar to cafes, cafeterias, and coffee shops. Extrapolating from this and the likelihood that such establishments could refer to themselves as restaurants, he considered the conflict applied to the whole of the applicants’ specification. Opposition thus succeeded on this ground as the respective marks were identical.

In view of the decision under Section 5(2)(a), the Section 5(4)(a) ground – Passing Off – was not considered.

Full decision O/186/03 PDF document33Kb