Trade mark decision

BL Number
Decision date
26 September 2001
Hearing Officer
Dr W J Trott
09, 11
Energizer Limited
N V Duracell Batteries SA & Duracell Batteries Limited
Sections 3(6), 5(2)(b) & 5(4)(a)


Section 3(6): - Opposition failed.

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

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

Points Of Interest

  • See associated case O/420/01 where the same decision was reached.


The opponents opposition was based on a claim to have rights in the colours black and yellow/orange and they owned a device mark limited to the colours black, red and yellow/orange. The opponents were also proprietors of the well known mark DURACELL and the Hearing Officer noted that the opponents trade dress for their batteries - copper and black - was also widely recognised.

Under Section 5(2)(b) it was accepted that identical goods were at issue and the Hearing Officer went on to compare the respective marks. While he noted some similarity the presence of the distinctive word EVEREADY could not be overlooked and he found that the respective marks were not confusingly similar. In so doing, he decided that the opponents had not made good their claim to exclusive rights in the colours yellow and black and indeed concluded that such colours or similar were widely used in the packaging of batteries.

Under Section 5(4)(a) - Passing Off - the comparison of marks incorporating the well known marks DURACELL and EVEREADY led the Hearing Officer to conclude that there was no likelihood of misrepresentation. The final ground under Section 3(6) was dismissed by the Hearing Officer on the basis that a real case had not been made out by the opponents. As the respective marks were not confusingly similar, any similarities were insufficient to justify a finding of bad faith.

Full decision O/418/01 PDF document635Kb