Trade mark decision

BL Number
Decision date
27 August 1999
Hearing Officer
Mr G Salthouse
32, 33, 42
Beli Import - und Export, Bau- und Handels GmbH
Prazski Pivovary A.S (formerly Pivovary Vratislavice Nad Nisou A.S.)
Sections 3(3)(b), 3(6), 5(2)(b) & 5(4)(a)


Section 3(3)(b) - Opposition failed.

Section 3(6) - Opposition failed.

Section 5(2)(b) - Opposition failed.

Section 5(4)(a) - Opposition (partially) succeeded.

Points Of Interest

  • None


Opposition based on opponent’s claim to substantial reputation and goodwill in the UK under various trade marks consisting of incorporating the word VRATISLAV or the word PIVOVAR used in respect of sales of alcoholic beverages. The opponent further claimed that those marks were entitled to protection under the Paris Convention as well-known trade marks.

The Hearing Officer rejected the later claim in the absence of evidence of public recognition of the mark in the UK, and therefore dismissed opposition under Section 5(2)(b).

In dealing with opposition under Section 5(4)(a), he accepted that the opponent had (modest) goodwill under its marks, and he was further persuaded that use of the mark in suit would involve misrepresentation (of the opponent's VRATISLAV marks) and damage would result, though only in respect of sales of alcoholic beverages , and notwithstanding that the opponent manufactures the applicant’s offending products.

The opposition under Section 5(4)(a) therefore succeeded in respect of beers and alcoholic beverages as specified in Classes 32 and 33, but not in respect of mineral waters and other beverages specified in Class 32 or services in Class 42, the Hearing Officer finding unsubstantiated the applicant’s claim to any contractual arrangement between the parties allowing the applicant to register and use the mark in suit.

Opposition under Section 3(3)(b) was held to be misconceived, and in view of his finding regarding the alleged contractual arrangement the Hearing Officer gave no further consideration to opposition under Section 3(6). The application was therefore allowed to proceed to registration subject to due restriction of the Class 32 specification and deletion of the Class 33 specification.

Full decision O/303/99 PDF document174Kb