Trade mark decision

BL Number

O/246/02

Decision date

18 June 2002

Hearing Officer

Mr G Salthouse

Mark

DEVICE ONLY MARK

Classes

29, 30

Applicant for Invalidity & Rectification

Robert Wiseman Dairies Plc

Registered Proprietor

Ferrero S.p.A.

Invalidity

Section 47(2)(a) based on Sections 5(2)(b) and 5(3)

Result

Sections 47(2)(a) & 5(2)(b) - Application for invalidity partially successful.

Sections 47(2)(a) & 5(3) - Application for invalidity failed.

Section 64 - Rectification action failed.

Points Of Interest

• None

Summary

The application for rectification was made on the basis that the mark as advertised in the Trade Marks Journal and registered was different from the mark as applied for. At the hearing, however, the applicant accepted that even if the registration was irregular, as claimed, the matter could not be rectified under Section 64 of the Act. In any event the Hearing Officer did not accept that there was anything irregular with the registration. The mark had been applied for in colour; colours were claimed in the advertisement; the advertisement was in half tone and entered on the Register in that format. Anyone could request a coloured copy of the mark applied for and an exercise is currently under way in the Registry to record all existing colour marks on the electronic register in colour.

With regard to the Section 5(2)(b) ground the Hearing Officer noted that identical and similar goods were at issue. While the applicant had filed details of use of its figurative marks much of the evidence was unfocussed and it was not clear, to what extent, if any, the use on packaging and in advertising would be recognised as individual figurative marks. Absence this information the Hearing Officer decided that the applicant did not have an enhanced reputation in its figurative marks. In comparing the respective marks, the Hearing Officer accepted that both parties marks could be used in the same colours, cream and red, that they were somewhat similar but that neither party’s marks had a high distinctive character. However, he considered that in relation to identical goods, the respective marks were sufficiently similar for there to be a likelihood of confusion of the public at the relevant date. Where only similar goods were at issue he considered there was no likelihood of confusion.

Under Section 5(3) where the ground related to non-similar goods the Hearing Officer found that the lack of focussed evidence was a major failing. Also in this context the marks were not so similar that unfair advantage of the applicant’s marks was possible or likely.

Full decision O/246/02 746Kb