Trade mark decision

BL Number

O/310/06

Decision date

31 October 2006

Hearing Officer

Mrs A Corbett

Mark

Device Only Mark

Classes

33

Applicant

William Grant & Sons Ltd

Opponent

Mast-Jägermeister AG

Opposition

Sections 5(2)(b) & 5(4)(a)

Result

Section 5(2)(b): Opposition failed. Section 5(4)(a): Not considered.

Points Of Interest

• None

Summary

In these proceedings the opponent relied upon two earlier trade marks; one consisting of a stag’s head and incorporating a cross device set within a sunburst device, the whole mark in a circular border. The second mark is of a stag’s head as above, but more realistic, with the other devices. This whole element is incorporated into a label type mark incorporating the name and address of the opponent. The opponent also provided details of user dating back to 1978 in respect of herb liqueurs and the Hearing Officer accepted that the opponent has a reputation in the United Kingdom.

The applicant also filed details of use of its mark dating back to 1974 in respect of its, or its predecessor’s, in conjunction with its famous GLENFIDDICH scotch whisky mark. Needless to say the turnover figures indicate significant user.

Under Section 5(2)9b) the Hearing Officer noted that in respect of the respective specifications identical goods were at issue. She then went on to make a careful comparison of the respective marks and concluded that they were not confusingly similar. Opposition thus failed on the Section 5(2)(b) ground.

In view of her decision under Section 5(2)(b) the Hearing Officer did not consider the ground under Section 5(4)(a).

Full decision O/310/06 142Kb