Trade mark decision

BL Number
Decision date
23 November 2001
Hearing Officer
Mr M Knight
Zakritoe Aktsionernoe Obchtchestvo Zakritogo Tipa "Torgovy" Dom Potomkov Postavchtchika Dvora Ego Imperatorskago Velitschestva P.A. Smirnova
UDV North America Inc
Sections 3(6); 5(2)(b); 5(4)(a)


Section 3(6) - Opposition failed

Section 5(2)(b) Opposition successful

Section 5(4)(a) - Opposition failed

Points Of Interest

  • None - but see other summaries in the series O/522/01 - O/526/01


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.

The opposition was based on the opponents registration of CMNPHOBb. The Hearing Officer considered that the objection under Section 5(2)(b) was the most likely to determine the outcome of the proceedings, and he therefore dealt with that matter first. It was argued that because the word SMIRNOFF (in Cyrillic script) appeared in the mark applied for, the product would be sold as SMIRNOFF. The Hearing Officer rejected this argument. However, when he compared the goods (identical) and the marks (similar) he considered that there existed a likelihood of confusion. The Section 5(2)(b) objection was therefore upheld.

For the sake of completeness he went on to consider the other grounds of opposition. Under Section 5(4)(a) he could not find that the opponents’mark had acquired any reputation or goodwill. Hence this ground failed. Neither could he find that the allegation of bad faith had been substantiated.

Full decision O/526/01 PDF document72Kb