Trade mark decision

BL Number

O/285/01

Decision date

2 July 2001

Hearing officer

Mr M Foley

Mark

CUTTY SARK

Classes

34

Applicant

Imperial Tobacco Limited

Opponent

Berry Bros & Rudd Limited

Opposition

Sections 5(2)(b); 5(3); 5(4)(a) & 56

Result

Section 5(2)(b) - Opposition successful

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Section 56 - Opposition failed

Points Of Interest

• 1. Section 55(1)(b) is not ambiguous; it excludes persons domiciled or commercially active solely within the United Kingdom from utilising the provisions of Section 56.
• 2. Spirits and tobacco products are not similar goods.

Summary

The opposition was based on the opponents’ use and registrations of their mark CUTTY SARK, registered in Class 33 in respect of "spirits" and in Class 34 in respect of "smokers’ articles included in Class 34". Dealing with the matter under Section 56, the Hearing Officer ruled that the opponents did not qualify for the protection afforded by that section, since they did not fall within the definition set out in Section 55(1)(b). In doing so, the Hearing Officer rejected a submission that that definition was ambiguous and could be taken as a "form of inclusion in the negative".

Under Section 5(2)(b) the Hearing Officer found that whilst the goods of the application and the goods of the opponents’ registration in class 33 (tobacco v spirits) were not similar, the same could not be said of the goods in the opponents’ registration in class 34; here there was similarity such as to give rise to a real and definite likelihood of confusion. The objection under Section 5(2)(b) succeeded accordingly.

This effectively decided the matter but the Hearing Officer went on to find that the opposition failed under Sections 5(3) and 5(4)(a).