Trade mark decision

BL Number

O/523/01

Decision date

23 November 2001

Hearing officer

Mr M Knight

Mark

SMIRNOFF

Classes

33

Registered Proprietor

UDV North America Inc

Applications for Revocation & Declarations of Invalidity

Zakritoe Aktsionernoe Obchtchestvo Zakritogo Tipa "Torgovy" Dom Potomkov Postavchtchika Dvora Ego Imperatorskago Velitschestva P.A. Smirnova

Revocation & Invalidation

Sections 46(1) & 47(1)

Result

Section 46(1) - Applications for revocation failed. [One registration partially revoked]

Section 47(2) - Application for invalidation partially successful

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.

In this case the applicants sought the revocation and invalidation of 14 registrations, on the grounds that:- the marks did not belong to the registered proprietors (Section 3(6)); they were deceptive as to origin, quality etc. (Section 3(3)(b); their use was prohibited in the UK (Section 3(4)); and in consequence of the use made of them they were liable to mislead the public etc (Section 46(1)(d)).

The Hearing Officer decided most of these matters in favour of the registered proprietors. In particular he found that the marks in suit were not trade descriptions and that in any event their various elements were not such as to materially deceive the public as to quality or origin. One registration was partially reduced in scope to reflect the use which had been made of it.