Trade mark decision

BL Number
O/524/01
Decision date
23 November 2001
Hearing Officer
Mr M Knight
Mark
SMIRNOFF ICE
Classes
33
Applicants
UDV North America Inc
Opponents
Zakritoe Aktsionernoe Obchtchestvo Zakritogo Tipa "Torgovy" Dom Potomkov Postavchtchika Dvora Ego Imperatorskago Velitschestva P.A. Smirnova
Opposition
Sections 3(3)(b); 3(4) & 3(6)

Result

Section 3(3)(b) - Opposition failed

Section 3(4) - Opposition failed

Section 3(6) - Opposition failed

Points Of Interest

  • 1. "In relation to Section 3(3)(b) there must be something inherent within the trade mark sufficient to mislead the public to a material extent before a positive finding can be made."
  • 2. "Insofar as Section 46(1)(d) is concerned ..... I look sensibly at the matter, no looking for the slightest misrepresentation but considering the matter in the round."

Summary

Note: This was one of five actions, concerning 18 marks involving the same parties and heard over two days. The central and common feature of all these disputes was the marks SMIRNOFF or its equivalent in Cyrillic script.

Under the various Sections of the Act cited in the opposition the Hearing Officer found that the mark was not likely to deceive (Section 3(3)(b)), was not a trade descriptions and hence not barred by the Trade Descriptions Act (Section 3(4)), and was not the result of a claim to proprietorship made in bad faith (Section 3(6)).

The opposition failed on all grounds.

Full decision O/524/01 PDF document34Kb