Trade mark decision

BL Number

O/255/01

Decision date

11 June 2001

Hearing officer

Mr M Reynolds

Mark

CHOCO PUFFS

Classes

30

Applicant

Quaker Oats Limited

Opponent

Kellogg Company & Kellogg Marketing & Sales Co (UK) Ltd

Opposition

Sections 3(1)(b) & 3(1)(c)

Result

Section 3(1)(b): - Opposition successful.

Section 3(1)(c): - Opposition successful.

Points Of Interest

• 1. Descriptive elements in combination
• 2. "Brand extensions"

Summary

[This was one of two oppositions to this application involving different opponents but raising essentially the same objections. They were heard on the same day; the parties’ representatives were the same in each case.] A preliminary point resulted in the admission of further evidence.

The Hearing Officer considered first the individual element of the mark in question and concluded:- ‘CHOCO’ is widely used as an indication of chocolate flavoured or chocolate coated products; "it is no less indicative of chocolate than the misspelling FROOT was of FRUIT in FROOT LOOPS trade marks [1998] RPC 240"; and "trade image has led the public to regard the word PUFFS as wholly descriptive of puffed wheat cereal products". He went on to conclude that "the totality is no more than the sum of its parts".

This brought the Hearing Officer to the main point in the applicants’ case which was that CHOCO PUFFS would be seen as a "brand extension" product; "a customer expectation arising from familiarity with the (well known) SUGAR PUFFS mark". The Hearing Officer concluded, however, that the common element was PUFFS, and he had earlier found that that was used in a wholly descriptive capacity both by the applicants and by other traders. He upheld the objections based on Sections 3(1)(b) and 3(1)(c).