Trade mark decision

BL Number
Decision date
24 October 2008
Hearing Officer
Mr O Morris
Independent Food Services Limited
Nisa-Today’s (Holdings) Limited
Section 5(2)(a)


Section 5(2)(a): Opposition successful.

Points Of Interest

  • See also Hearing Officer’s decision dated 16/1/07 (BL O/022/07) and Appointed Person decision dated 22/8/07 (BL O/247/07)


The opponent owns a registration for the mark HERITAGE in Class 32 in respect of “non-alcoholic beverages; beers”. The application in suit is in Class 33 in respect of cider.

Under Section 5(2)(a) the Hearing Officer considered in some detai9l the existence of non-alcoholic cider and whether or not such goods would be included within the term “non-alcoholic beverages”. He reached an affirmative decision on both points and decided that non-alcoholic cider and cider were very similar goods. He reached the same conclusion in relation to the goods beer and cider. As the marks are identical it followed that the opponent was successful in its opposition under Section 5(2)(a).

In earlier proceedings the opponent in these proceedings had applied to register the mark HERITAGE in Class 33 but the applicant for this registration had successfully opposed that application. It, therefore, claimed to have a passing-off right and also the benefit of the “honest concurrent use” provisions. The Hearing Officer noted that the evidence of honest concurrent use which had been filed at the ex-parte stage had not been filed in these proceedings; neither had the evidence from the earlier proceedings, relating to the claimed passing off right, been filed. In the Hearing Officer’s view there was in fact no “honest concurrent use” and the claimed passing-off right did not assist in relation to Section 5(2)(a). A claim to simple first user did not justify registration of the application in suit. Opposition successful.

Full decision O/292/08 PDF document95Kb