Trade mark decision

BL Number
Decision date
6 September 2001
Hearing Officer
Mr J MacGillivray
Cita Tabacos De Canarias SA
First Quench Retailing Limited
Sections 3(6), 5(2)(b), 5(3) & 5(4)(a)


Section 3(6) - Opposition partially successful.

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

Section 5(3) - Opposition failed.

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

Points Of Interest

  • Retailing of goods: The fact that a company may have a reputation as a retailer does not automatically mean that reputation extends to the goods themselves.


The opponents opposition was based on their ownership of a number of VICTORIA plus marks, in particular, VICTORIA WINE and VICTORIA WINE COMPANY. The opponents are a substantial company with over 1000 off-license trade outlets engaged essentially in the sale of beverages and tobacco. They claimed to have sold tobacco products under an own brand label in the 1980's but this claim was not substantiated in their evidence.

The applicants indicated in their evidence that they traded in cigarillos in Spain and wished to sell such goods in the UK. In view of this admission the Hearing Officer found for the opponents under Section 3(6) of the Act and reduced the applicants specification to "cigarillos".

Under Section 5(4)(a) - Passing Off - the Hearing Officer accepted that the opponents had a significant reputation in their mark as a retailer of alcoholic beverages and tobacco products. However, he concluded that this reputation and goodwill did not extend to the goods themselves. This finding combined with the fact that the marks were similar rather than identical led the Hearing Officer to conclude that the applicants use of their mark in relation to cigarillos would not amount to a misrepresentation. A similar finding was reached under Section 5(3).

With regard to Section 5(2)(b) the Hearing Officer again noted that the respective marks were similar but concluded that the applicants goods - cigarillos - were very different from the goods covered by the opponents’ registrations in Classes 30, 32 and 33 and also different from their services in Classes 39 and 42. Opposition failed on this ground.

Full decision O/386/01 PDF document46Kb