Trade mark decision

BL Number
Decision date
14 September 1999
Hearing Officer
Mr D Morgan
Hilton Herbs Ltd
Hilton International Co
Sections 3(1)(a), 3(1)(b), 3(6), 5(3) & 5(4)(a)


Section 3 - Opposition failed.

Section 5(3) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

  • 1. Evidence of use originally submitted in support of application but not resubmitted in opposition proceedings was nevertheless taken into account by the Hearing Officer since both sides referred to it.


Opposition based on opponent’s various registrations of the trade mark HILTON notably in class 31 (block capitals) for health and leisure club services, and in Class 42 (block capitals and stylised) for hotel, bar and restaurant services.

In dealing with opposition under Section 3, the Hearing Officer found, briefly, no basis for objection under Section 3(1)(a) or Section 3(6). Nor could he uphold objection under Section 3(1)(b), since in his view the inclusion of the word HERBS in the mark in suit and the nature of the stylisation emphasised the trade mark character of the totality of the mark. Moreover, HILTON was not such a common surname as to weaken its character, and in any event on the evidence the applicant could have demonstrated the mark had acquired a distinctive character through use.

Under Section 5(3), the Hearing Officer found the word HERBS in the mark in suit, and the stylisation (herbs or foliage entwined round the first letter of each word) was not sufficient to differentiate the respective marks. However, (applying the OASIS decision) while accepting that the opponent had substantial goodwill and reputation in respect of certain hotel services etc, he found no basis for concluding that use of the mark in suit would have a detrimental effect on the distinctive character or repute of the opponent’s marks for any such services, the respective goods and services being totally unrelated and offered at completely different outlets. Nor would the applicant’s trade impact adversely on the opponent. Thus opposition on that ground also failed.

Having concluded that there was no link, tenuous or otherwise between the respective goods and services and no evidence of confusion, the Hearing Officer also found briefly no basis for upholding opposition under Section 5(4)(a).

Full decision O/317/99 PDF document40Kb