Trade mark decision

BL Number
Decision date
23 October 2002
Hearing Officer
Mr M Knight
(see also BL O/437/02, BL O/440/02 & BL O/441/02
Swizzels Matlow Limited
Societe Des Produits Nestle SA


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

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

Points Of Interest

  • 1. Paris Convention : Article 6 bis : interpretation.
  • 2. Comparison of the marks; words v shapes.
  • 3. Honest concurrent use.


This was one of four sets of proceedings involving Nestle and marks comprising sweets with holes. This opposition was based on three marks:- (i) a depiction of an annular sweet bearing the word POLO, shown in plan; (ii) an annular sweet shape, also bearing the word POLO and (iii) an annular sweet shape, without words. The first mark was registered, the other two were not yet registered. The opponents claimed that these were also entitled to the protection of the Paris Convention.

One of the opponents' applications had itself been the subject of opposition proceedings.

Dealing firstly with the opponents' claim relating to the Paris Convention the Hearing Officer having considered the question of the correct interpretation of Section 56 and of Article 6 bis of the Convention, and the evidence relating to the fame of the marks, found that the opponents' claim was not made out.

Under Section 5(2)(b) the Hearing Officer, whilst accepting that the opponents had established that the shape of the POLO mint was identified with them, felt that the public would "rely more upon the traditional trade mark identifiers eg a word"; the difference in the words in this case NAVY v POLO meant that they were not similar and hence there could be no finding of likelihood of confusion. The Hearing Officer went on to record that the fact that the application had been accepted on the basis of honest concurrent use had not affected his decision.

The dissimilarity in the marks effectively decided the matter under Section 5(4)(a) also.

Full decision O/436/02 PDF document802Kb