Trade mark decision

BL Number
O/235/00
Decision date
6 July 2000
Hearing Officer
Mr M Knight
Mark
WHAT NOT BUTTER
Classes
29
Applicant
Matthews Foods Plc
Opponent
Unilever Plc & Van den Bergh Foods Ltd
Opposition
Sections 3(3)(b), 3(6) & 5(2)(b)

Result

Section 3(3)(b) - Opposition failed

Section 3(6) - Opposition failed

Section 5(2)(b) - Opposition successful

Points Of Interest

  • None

Summary

The opponents opposition was based on their ownership and use of their registered mark I CAN’T BELIEVE ITS NOT BUTTER! There had been extensive use of this mark since 1991 and by the relevant date, 1996, they had a considerable reputation in their mark in relation to a vegetable fat spread containing buttermilk. The applicants claimed to have used their mark after the date of application and provided details of similar marks which they said were in use in relation to vegetable fat products.

The opponents grounds of objection under Sections 3(3)(b) and 3(6) were based on the fact that the mark indicated goods connected in some way with butter, whereas the applicants specification also included lard. They said there could be deception of the public if the mark was used in relation to lard; or more likely that the applicants did not intend to use their mark in relation to such goods. The Hearing Officer concluded from the evidence filed and the submissions made, that deception was most unlikely and that as regards "intention to use" the opponents had not substantiated their claim with relevant evidence.

Under Section 5(2)(b) it was common ground that identical goods were at issue so the dispute rested on a comparison of the respective marks WHAT, NOT BUTTER and I CAN’T BELIEVE ITS NOT BUTTER. The Hearing Officer noted that visually and aurally they were somewhat different but overall there were significant similarities in that both contained the words NOT BUTTER and an explanation mark and conceptually they conjured up the same idea; one of surprise that the product was in fact not butter. Bearing in mind the reputation of the opponents mark, the Hearing Officer reached the view that there was a likelihood of confusion of the public.

Full decision O/235/00 PDF document19Kb