Trade mark decision

BL Number

O/494/01

Decision date

9 November 2001

Hearing Officer

Mr M Knight

Mark

SUMMER DELIGHT

Classes

32

Applicant

Tropical Delight Limited

Opponent

Sundor Brands Inc

Opposition

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

Result

Section 3(6) Opposition failed

Section 5(2)(b) Opposition succeedded

Points Of Interest

• None.

Summary

The essential ground of opposition in these proceedings was under Section 5(2)(b) since the opponents filed no evidence to support their claim under Section 3(6) and that ground was dismissed at the outset.

The opponents owned a number of registrations for the mark SUNNY DELIGHT and claimed significant sales under the mark from April 1998 onwards. Also there had been extensive advertising and promotion of the mark. However, the period of use prior to the relevant date was only some fifteen months and the Hearing officer considered that the evidence was insufficiently focussed to show that the mark enjoyed an enhanced reputation. The applicants claimed that the word DELIGHT was a common element on the Register for these goods but failed to show that a similar situation existed in the marketplace.

Under Section 5(2)(b) it was common ground that identical and closely similar goods were at issue so the conflict rested on a comparison of the respective marks SUMMER DELIGHT and SUNNY DELIGHT. The Hearing Officer considered that while the separate elements SUMMER and SUNNY were ordinary dictionary words with their own meanings there was conceptual similarities; some phonetic similarity and of course the same word DELIGHT. In summary the Hearing Officer considered that there was a real likelihood of confusion between the two marks bearing in mind the aforesaid similarities and imperfect recollection. Opposition succeeded on this ground.

Full decision O/494/01 49Kb