Trade mark decision

BL Number
Decision date
4 August 2004
Hearing Officer
Mr M Reynolds
32, 33
California Direct Limited
Wingara Wine Group Pty Ltd
Sections 5(1) & 5(2)(b)


Section 5(1): - Opposition failed.

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

Points Of Interest

  • 1. Identicality of marks.
  • 2. Comparison of the goods; beers v wines.


The opposition was based on a community trade mark registration of the mark PRODIGY, registered in respect of wines and claiming a month’s priority over that of the application in suit. The question of priority had arisen at an earlier stage in the proceedings and the necessary substantiation of the claim had been provided by the opponents.

The Hearing Officer considered the matter first under Section 5(1). Since the goods concerned were the same, the issue to be decided under Section 5(1) turned on the identicality of the marks. In the result the Hearing Officer concluded that the differences in the marks were not insignificant and the marks were therefore not identical. The Section 5(1) objection failed accordingly.

The only issue to be decided under Section 5(2)(b), said the Hearing Officer, concerned the Class 32 goods in the applicants’ specification (namely beer) since the opposition clearly succeeded in respect of the Class 33 goods.

Having considered the matter, and particularly bearing in mind “the importance of the merchandising of the goods and channels of trade” the Hearing Officer concluded that there was a likelihood of confusion in the beers v wines clash also. The opposition under Section 5(2)(b) therefore succeeded in respect of both Classes 32 and 33.

Full decision O/233/04 PDF document39Kb