Trade mark decision

BL Number

O/401/03

Decision date

19 December 2003

Hearing Officer

Mr D Landau

Mark

VIÑA SAN PEDRO, 1865

Classes

33

Applicant

Vina San Pedro SA

Opponent

Vranken Monopole

Opposition

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

Result

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

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

Points Of Interest

• 1. Comparison of the marks SAO PEDRO v SAN PEDRO.
• 2. Existing registration does not provide a defence in opposition proceedings.

Summary

The opposition was based on marks which, in essence, comprised wine labels showing the words SAO PEDRO together with other written material.

Taking first the objection under Section 5(2)(b) the Hearing Officer found goods both identical and similar to be involved.

The marks too were similar, he found; the 1865 element would, he thought, be seen merely as a date. After considering other relevant matters the Hearing Officer considered that there existed a likelihood of confusion. The fact that the applicants already had a registration of SAN PEDRO, which the Hearing Officer described as "a slightly odd circumstance", did not provide a defence; the opponents could be minded to take invalidity action.

The opposition under Section 5(2)(b) succeeded.

This opposition under Section 5(4)(a), had it still been crucial, could only have succeeded to the extent of an exclusion of 'port' from the applicants' specification.

Full decision O/401/03 94Kb