Trade mark decision

BL Number

O/478/01

Decision date

1 November 2001

Hearing Officer

Mr M Foley

Mark

LES PAGODES DE COS

Classes

33

Applicant

G.F.A. Des Domaines Prats (France)

Opponent

Zhejiang Cereals, Oils & Foodstuffs Import & Export Co Ltd

Opposition

Sections 5(2)(b) & 3(6)

Result

Sections 5(2)(b) - Opposition failed

Sections 3(6) - Opposition failed

Points Of Interest

• Restriction of specification. The applicants indicated at the hearing that they would be prepared to restrict their specification to "wines" in an effort to resolve the conflict, but this was not pursued because of the Hearing Officer’s decision under Section 3(6).

Summary

The opponents opposition was based on their ownership of three PAGODA label marks registered in Class 33 and the mark PAGODA registered in Class 32. Use was claimed by the opponents, particularly in relation to rice wine but their evidence failed to establish any particular reputation. Based on the breadth of the respective specifications the Hearing Officer noted that identical goods were at issue and went on to compare the applicants mark LES PAGODES DE COS (meaning the Pagoda Of Cos) with the most relevant of the opponents’ label marks which consisted of the words PAGODA BRAND, Chinese characters and the device of a Pagoda. The Hearing Officer noted that while each marks incorporated the distinctive element PAGODA, the marks had to be compared as wholes and on that basis they were not confusingly similar. Opposition failed on the Section 5(2)(b) ground).

Under Section 3(6) the opponents claimed that as the applicants use their mark in France on a chateaux wine, it was most unlikely that they would trade under the mark in respect of all the goods claimed - alcoholic beverages (except beers). However, the Hearing Officer noted that an applicant can apply on the basis of intention to use and, as the specification claimed was not unduly wide, he saw no reason to restrict the applicants specification.

Full decision O/478/01 331Kb