Trade mark decision

BL Number
Decision date
27 September 2007
Hearing Officer
Mr M Reynolds
Caves Vidigal SA
Next Retail Limited
Sections 5(2)(b), 5(3) & 5(4)(a)


Section 5(2)(b): Opposition failed. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed.

Points Of Interest

  • None


The opponent owns a registration or the mark NEXT in the UK in Classes 2, 3, 4, 8, 16, 21, 30, 33 and 35 and a Community Trade Mark in Classes 3, 11, 14, 18, 20, 24, 25 and 27. Only the UK registration was relied on for Section 5(2)(b) purposes and both registrations for Section 5(3) purposes. As regards the Section 5(4)(a) ground the opponent claimed use of the mark NEXT on a wide variety of goods including alcoholic beverages and wines. It also claimed use of the mark NEXT WINE SELECTION from at least 2004.

In its evidence the opponent claimed use of its mark NEXT from 1982 in respect of clothing and a wide range of household goods and currently has 450 NEXT stores in the UK. Turnover in 2004 was in excess of £2.5 billion. Turnover in relation to alcoholic beverages and wine increased from £216k in 2004 to £392 k in 2005. In its reply evidence the opponent attempted to show that the word STATION is not distinctive in relation to wines.

In its evidence the application filed details from various databases to show that various marks incorporate the element NEXT.

As regards the ground under Section 5(2)(b) it was accepted that identical goods were at issue so the only matter to be decided was a comparison of the marks NEXT and NEXT STATION. As regards the opponent’s mark the Hearing Officer concluded that it had a low to modest distinctive character and that the modest user was insufficient to enhance that distinctive character in relation to Class 33 goods. Nor did the Hearing Officer accept that the word STATION was non-distinctive for wines etc and went on to conclude that because the respective marks are different conceptually they are not confusingly similar. Opposition failed on this ground.

The opponent also failed in its opposition under Section 5(3) in respect of dissimilar goods and on the Section 5(4)(a) ground because it had failed to establish that use of the mark in suit would constitute a misrepresentation.

Full decision O/284/07 PDF document48Kb