Trade mark decision

BL Number
O/381/00
Decision date
18 October 2000
Hearing Officer
Mr G Salthouse
Mark
DEVICE ONLY MARK (MONKEY)
Classes
29, 31
Applicant
Infamous Nut Company Ltd
Opponent
Percy Dalton (Holdings) Ltd
Opposition
Section 3(6) and Section 5(2)

Result

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

Section 3(6) - Opposition failed.

Points Of Interest

  • 1. Where a mark consists or is closely similar to a generic term, it is liable to be viewed as being low in distinctive character.
  • 2. The opponents appealed the Hearing Officer’s decision to the Appointed Person. In her decision dated 17 September 2001 (O/411/01) the Appointed Person upheld the Hearing Officer’s decision.

Summary

The opponents opposition was based on ownership of a number of registrations in Classes 29 and 31 consisting of the word MONKIES and MONKIES and device. They also claimed use of their marks on nut and nut products for many years. Under Section 5(2)(b) the Hearing Officer established, in the strongest case, that identical goods were at issue and went on to compare the applicants mark - which he described as an indeterminate primates head - with the opponents strongest mark which consists of the word MONKIES with a device of a cartoon type primate. The Hearing Officer accepted that the applicants mark might be referred to overall as a MONKEY mark but as MONKEY is a generic term for ground nuts and peanuts, he concluded that phonetic similarity would be irrelevant. Conceptionally there may also be a link between the respective marks but given that MONKEY is a generic term in relation to the goods at issue the Hearing Officer took the view that the similarity was insufficient to give rise to a likelihood of confusion.

Under Section 3(6) the opponents had filed copy correspondence between themselves and the applicants about the similarity of the respective marks. However, the Hearing Officer was not satisfied that claims and admissions made in that correspondence was sufficient to justify a finding of bad faith

Full decision O/381/00 PDF document50Kb