Trade mark decision

BL Number
Decision date
13 May 2002
Hearing Officer
Mr C Bowen
Lidl Stiftung & Co KG
Ferrero S.p.A.
Sections 3(3)(b) & 5(2)(b)


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

Section 3(3)(b) - Opposition failed.

Points Of Interest

  • None.


The opponents own a registration for the mark KINDER CIRCUS in Class 30 in respect of the same and similar goods as those in the applicants application. Neither party had any use of their marks but the applicants filed evidence to show that there were other CIRCUS marks on the Register in Class 30 and that both the applicants and the opponents had obtained consent from the owners of these marks, so that the respective marks could proceed to registration. The opponents filed some evidence to show that while there might be a number of CIRCUS marks on the Register, none were in use in the marketplace.

Under Section 5(2)(b) the Hearing Officer determined that identical and similar goods were at issue. However, some goods within the applicants specification were not similar to the opponents’ goods. In comparing the respective trade marks CHOCO CIRCUS and KINDER CIRCUS it was accepted by both parties that CHOCO was descriptive of chocolate and chocolate products and that KINDER was a well known mark. However, the Hearing Officer considered that the public would see the word CIRCUS as being the distinctive element in both marks and as CHOCO was likely to be seen as descriptive he concluded that the public could well believe that the respective goods under the two marks came from economically linked undertakings. The opponents were therefore successful on this ground in relation to the same and similar goods in the applicants specification. Application allowed to proceed for other goods.

In relation to the ground under Section 3(3)(b) where the opponents suggested that as CHOCO strongly suggests chocolate and chocolate products, the applicants specification should be restricted to such goods, the Hearing Officer followed Registry practice as set down in the manual and declined to impose such a restriction. He stated that it was a commercial decision for the applicants as to what goods were traded under the mark and that it would not be in their interest to mislead the public. Opposition failed on this ground.

Full decision O/200/02 PDF document30Kb