Trade mark decision

BL Number

O/517/02

Decision date

13 December 2002

Hearing Officer

Dr W J Trott

Mark

SMOOTHIE

Classes

29, 32

Applicant

Beecham Group Plc

Opponent

Hansen Beverage Company

Opposition

Sections 3(1)(a); 3(1)(d); 3(6) & 5(2)(b)

Result

Section 3(1)(a): - Opposition failed.

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

Section 3(6): - Opposition failed.

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

Points Of Interest

• Comparison of the marks:-FEELIN’ SMOOTHIE )
• CALIFORNIA SMOOTHIE ) v SMOOTHIE, stylised & device
• BLOODY SMOOTHIE )
• SMOOTHIE P&J )

Summary

The opposition under Section 5(2)(b) was based on registrations (not in the ownership of the opponent) of FEELIN’ SMOOTHIE, CALIFORNIA SMOOTHIE, BLOODY SMOOTHIE and P & j SMOOTHIE (and device) all either in Class 29 or 32 or both.

The ground under Section 3(1)(a) was quickly dismissed; the Hearing Officer had no doubts as to the mark’s capacity to carry out the essential function of a trade mark.

Under Section 3(1)(d), the Hearing Officer found that the mark did not consist solely of a sign “customary in the current language of the trade”, ‘SMOOTHIE’, but was presented and configured “in a manner that differs from the usual way of designating the goods concerned”. That ground was dismissed.

The allegations under Section 3(6) was that the applicant was seeking to monopolise the word SMOOTHIE. However, the Hearing Officer found that even if this could be characterized as an act of bad faith, there was no basis for it in this case since the mark did not consist solely of that word but contained “additional pictorial matter”. This ground, too, was dismissed.

Under Section 5(2)(b) the Hearing Officer, having compared the various marks in turn, considered that in each case the distinctive and dominant elements resided in features other than the word SMOOTHIE, which was a non-distinctive/generic word indicating some form of fruit based beverage. The only common element, being descriptive, was off-set by the other elements. There was no likelihood of confusion and the Section 5(2)(b) opposition failed accordingly.

Full decision O/517/02 56Kb