Trade mark decision

BL Number
Decision date
29 July 2005
Appointed Person
Mr Richard Arnold QC
power bat ENERGY DRINK
Elvis Mustafov
Barcardi & Company Limited
Appeal to the Appointed Person against the decision of the Registrar's Hearing Officer in opposition proceedings.


Appeal dismissed.

Points Of Interest

  • 1. Alternative grounds; tribunal of first instance should decide all points where possible.
  • 2. Alternative grounds; continued reliance on ; good practice to serve Respondent's Notice; recommended time for service.


At first instance (see BL O/037/05) the Hearing Officer had upheld the opposition under Section 5(2)(b). The applicant appealed to the Appointed Person, contending that the Hearing Officer had failed correctly to apply the judgement of the ECJ in SABEL v PUMA, and that his approach to the question of aural similarity was wrong.

The Appointed Person, however, noted certain differences between the instant case and SABEL and he upheld the Hearing Officer's approach and his findings. He also endorsed the Hearing Officer's approach to the question of aural similarity. In the result the appeal was dismissed.

However, he went on to comment on the Hearing Officer's decision not to make any findings under the other grounds on which the opposition had been brought, since the opponent/respondent in this appeal had made it clear that he continued to rely on them. First, he said, "while it is tempting for the first instance tribunal only to decide one point if that appears decisive, it can prove a false economy if the appellate tribunal considers that the first instance tribunal was wrong on that point and then has to remit the matter for the outstanding points to be dealt with". Normally the better course is for the first tribunal to determine all points in issue, accepting, of course, that that is easier where there has been an oral hearing.

Secondly the Appointed Person commented that there had been no indication of the opponent's intentions prior to receipt of the skeleton argument shortly before the hearing. Whilst the Trade Mark Rules do not require the service of a Respondent's Notice, equally they do not prohibit such a step. It would be good practice to serve such a notice where the alternative grounds are relied upon, said the Appointed Person, and an appropriate time would be 14 days after service of the Notice of Appeal.

Full decision O/218/05 PDF document132Kb