Trade mark decision

BL Number

O/134/98

Decision date

25 June 1998

Hearing officer

Mr A James

Mark

CHLORMINT

Classes

30

Applicant

Perfetti SpA

Opponent

Warner Lambert Company

Opposition

Sections 11 & 12(1) of the Trade Marks Act 1938

Result

Section 11 - Opposition failed.

Section 12(1) - Opposition failed.

Points Of Interest

• During the Hearing reference was made to an earlier dispute between the two parties involving the marks CHLORALIT and CLORETS. In the Registry the Hearing Officer had found for the opponents and decided that the respective marks were confusingly similar. By the time of the Hearing that decision had been overturned in the High Court. In a later appeal to the Court of Appeal the Hearing Officer’s decision was reinstated.

Summary

The opponents opposition was based on their ownership of a registration for the mark CLORETS in Class 30 in respect of identical and similar goods as those of the applicants. The opponents also claimed extensive use of their mark over a number of years and the Hearing Officer accepted that they had a reputation in their mark. The opponents also claimed that they owned the only CLOR prefix mark in the marketplace.

The applicants said their mark had been devised for a new range of confectionery containing chlorophyll (CHLOR) and MINT to reflect the flavour of the products.

The Hearing Officer noted that identical goods were at issue and went on to compare the respective marks CHLORMINT and CLORETS, taking account of the reputation the opponents had in their CLORETS mark. However, the Hearing Officer decided that the respective marks were different visually and aurally and thus not confusingly similar. Nor did he think the public would assume that the respective goods came from the same source because of the CLOR/CHLOR prefix as they were not identical and as CHLOR had descriptive connotations. The opposition under Section 11 failed and a similar finding also applied to the Section 12(1) ground.