Trade mark decision

BL Number
Decision date
23 October 2002
Hearing Officer
Mr M Knight
Société des Produits Nestlé SA
Kraft Food Holdings, Inc
Sections 3(1)(b); 3(1)(d) & 5(2)(b)


Section 3(1)(b): - Opposition failed, but mark subjected to limitations as to product, colour and size.

Section 3(1)(d): Opposition failed.

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

Points Of Interest

  • 1. Meaning of "customary in the trade" : Section 3(1)(d).
  • 2. Shape marks : criteria for assessing distinctiveness.
  • 3. Survey evidence.


This was one of four related sets of proceedings involving Nestlé and marks described as annular sweets, ie sweets with a hole in the centre. The Hearing Officer's reasons and findings in respect of the objections under Sections 3(1)(b) and 3(1)(d) were essentially the same, mutatis mutandis, as in BL O/440/02 qv.

This case, however, had an additional ground of objection under Section 5(2)(b). Under this head the Hearing Officer had to compare the application in suit with two registrations and an application, each either containing a depiction of an annular sweet, or comprising a 3d annular sweet embossed with the word LIFE SAVERS. The Hearing Officer found the goods, in all cases, to be identical. He went on to compare the mark applied for with each of the opponents' marks in turn.

The first mark had the words PEP-O-MINT, LIFE SAVERS, THE CANDY SWEET WITH THE HOLE. The letter O, in the first word also had the words LIFE SAVER around its rim. The Hearing Officer considered that this mark was not similar to the mark applied for.

The second mark, a device mark of a sailor with a body in the shape of an annular sweet he also considered to be not similar to the mark applied for.

The words LIFE SAVERS in the third mark, in the Hearing Officer's view, meant that it would be identified with the opponents rather than the applicants. "If there was or is any association it will be association in the strict sense, a momentary bringing to mind" he said.

The objection failed in respect of all three marks.

Full decision O/441/02 PDF document601Kb