Trade mark decision

BL Number
Decision date
4 July 2005
Hearing Officer
Mr D Landau
Maws (Wine Importers)
Miguel Torres SA
Sections 5(2)(b) & 5(4)(a)


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

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

Points Of Interest

  • None


The opponent’s opposition was based on the ownership of two registrations in Class 33 in respect of identical goods as those of the applicant. VINA SOL is registered in the UK and VIÑA SOL as a Community registration. The opponent also filed details of extensive use of its mark VINA SOL in the UK from 1983 onwards with first use claimed in 1965. The use shows that VINA SOL is used as part of a label mark which also contains the house mark TORRES and a shield device. In the event the Hearing Officer did not consider that this use, and reputation claimed, did not assist the opponent as he considered the marks VIÑA SOL and VINA SOL to be inherently distinctive.

The applicant also filed details of how it proposed to use its mark; it claimed the respective goods were not identical because its wine was aimed at the lower price end of the market as compared to the opponent’s wine which is aimed at the mid-sector of the market. Under Section 5(2)(b) the Hearing Officer noted that he had to compare the respective specifications and not consider only on what goods the respective trade marks might be used. That being the case identical goods were clearly at issue. Even if the applicant restricted its goods to those on which it proposed to use its mark, it would not assist its application since identical goods would still be at issue, given the width of the opponent’s specification.

As regards the respective marks VINA SOL, VIÑA SOL and VILLE DEL SOL; the Hearing Officer noted the presence of the word SOL in all three marks and that the words VINA, VIÑA and VILLE have some visual and phonetic similarity. However, conceptually VILLE would be recognised as an English word and is thus different from VINA and VIÑA. Overall, taking all the relevant considerations into account the Hearing Officer considered the respective marks to be similar and that the opposition succeeded.

In view of his decision under Section 5(2)(b) the Hearing Officer saw no need to consider the ground under Section 5(4)(a)

Full decision O/190/05 PDF document183Kb