Trade mark decision

BL Number: O/227/04
Decision date: 30 July 2004
Appointed Person: Mr Richard Arnold QC
Mark: KENTUCKY FRIED CHICKEN
Classes: 42
Applicant: Mr Muhammad Sarmad t/a Kennedy Fried Chicken
Opponent: Kentucky Fried Chicken (Great Britain) Ltd
Opposition: Sections 5(2)(b) and 5(4)a)

Result

Section 5(2)(b) - Appeal allowed. Opposition successful.

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

Points Of Interest

1. See also Hearing Officer's decision dated 16 July 2003 (BL O/204/03)

Summary

The opponent appealed the Hearing Officer's decision of 16 July 2003 (BL O/204/03) in which he had dismissed the opponent opposition under Sections 5(2)(b) and 5(4)(a).

In its appeal the opponent submitted that the Hearing Officer had failed to properly compare the marks as wholes; that he had failed to assess the likelihood of confusion on the basis of normal and fair use and that he had wrongly rejected survey evidence. It was common ground on appeal that the same and similar services were at issue.

In comparing the respective marks KENNEDY FRIED CHICKEN and KENTUCKY FRIED CHICKEN the Hearing Officer referred to the descriptive nature of the words FRIED CHICKEN and concentrated on comparing the words KENNEDY and KENTUCKY. The Appointed Person, however, noted that both parties offered a full range of restaurant and take-away services for foodstuffs and drinks at large. That being the case FRIED CHICKEN was not directly descriptive for many of the items sold or services provided. When compared as wholes, and bearing in mind the opponent's reputation in its mark KENTUCKY FRIED CHICKEN, the Appointed Person considered that the respective marks were visually, phonetically and conceptually similar, He also considered that there might be a tendency to refer to both marks by their initials, in the context of normal and fair use; that the evidence showed both used the colours red and white and that one had to speculate that both could operate a chain of outlets under the respective marks. Taking all these factors into consideration the Appointed Person considered there was a likelihood of confusion and that the opponent succeeded under Section 5(2)(b).

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

With regard to the disallowed survey evidence the Appointed Person confirmed that the Hearing Officer had been right to reject this evidence.

Full decision O/227/04 34Kb