Trade mark decision

BL Number

O/259/98

Decision date

9 December 1998

Hearing Officer

Mr M Knight

Mark

DEVICE OF A TOOTH

Classes

05

Applicant

Suntory Limited

Opponent

Aktion Zahnfreundlich

Opposition

Sections 3(6), 5(2) & 5(4)(a)

Result

Section 3(6) - Opposition failed

Section 5(2) - Opposition partially successful

Section 5(4)(a) - Opposition failed

Points Of Interest

• 1. Certification Trade Marks. The Hearing Officer stated that in his view the Trade Marks Act 1994 did not give Certification Trade Marks any particular consideration under Sections 5 and 6 such that the penumbra of protection afforded to them was any greater than ordinary trade marks.

Summary

The opponents opposition was based on a mark comprising a tooth device bearing a cartoon face, sheltered under an umbrella and set in a dark background. They claimed to have been promoting it for some two years prior to the relevant date and to have registered it as a Certification Mark in Class 30. It is used in relation to goods which are "tooth friendly" since they contain less sugar and acids which harm teeth.

Under Section 3(6) the Hearing Officer accepted that the applicants might have been aware of the opponents mark when they filed their own application, but the opponents had filed insufficient evidence to establish that that filing had been in bad faith.

Under Section 5(2) the Hearing Officer established that foodstuffs in Class 30 are similar to dietetic and medicated foodstuffs in Class 5 - but not similar to pharmaceutical preparations and substances. He also concluded that the respective devices were so conceptually and visually similar that there was a likelihood of confusion on the part of the public. Application allowed for a restricted specification.

The Hearing Officer only dealt briefly with Section 5(4)(a) - Passing Off - since he concluded that at the relevant date the opponents had no significant reputation in their mark.