Trade mark decision

BL Number: O/294/03
Decision date: 1 October 2003
Hearing Officer: Mr M Foley
Mark: HANDWICH
Classes: 29, 30, 35, 39, 42
Applicant: Societe Des Produits Nestle SA
Opponent: Bernard Matthews Limited
Opposition: Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b) - Opposition partially successful (Class 29).

Section 5(3) - Opposition failed.

Section 5(4)(a) Opposition failed.

Points Of Interest

1. None

Summary

The opponents only opposed registration of the mark in suit in Classes 29 and 30 and prayed in aid of their opposition two registrations of the mark HAMWICH in Class 29 in respect of Turkey ham and more generally meat, meat products and poultry, poultry products, all being hams and prepared meals containing such hams.

The opponents filed evidence of use from 1985 onwards in relation to HAMWICH in respect of turkey ham in a batter or crumb and from 1986 of the mark CHEESE HANDWICH in respect of a turkey-cheese product. Use was extensive over the period and the marks have been widely promoted in the press and on television. The Hearing Officer accepted that the opponents had a reputation and goodwill in their marks in relation to a range of specific goods.

Under Section 5(2)(b) the Hearing Officer decided that the respective marks HANDWICH and HAMWICH were very similar. As regards the respective goods the Hearing Officer concluded that the only goods of the applicants being similar to the opponents, were ‘prepared fish and or seafood coated in batter or crumbs' (Class 29). There was no clash with the applicants' Class 30 goods.

As regards the ground under Section 5(3) in respect of dissimilar goods, the Hearing Officer noted that the opponents only used their mark in relation to very specific goods. There was no evidence prior to the relevant date that the opponents' marks were used in relation to other goods and there was no evidence to indicate that consumers would see a connection between the respective marks where the goods at issue were different. Therefore there was unlikely to be any detrimental affect on the distinctiveness of the opponents' marks. Opposition failed on the Section 5(3) ground.

The ground under Section 5(4)(a) also failed because this ground added nothing new beyond the grounds dealt with above.

Full decision O/294/03 42Kb