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United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> BOAKA (Trade Mark: Opposition) [2001] UKIntelP o52601 (23 November 2001)
URL: http://www.bailii.org/uk/cases/UKIntelP/2001/o52601.html
Cite as: [2001] UKIntelP o52601
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BOAKA (Trade Mark: Opposition) [2001] UKIntelP o52601 (23 November 2001)
For the whole decision click here: o52601
Trade mark decision
- BL Number
- O/526/01
- Decision date
- 23 November 2001
- Hearing officer
- Mr M Knight
- Mark
- BOAKA
- Classes
- 33
- Applicants
- Zakritoe Aktsionernoe Obchtchestvo Zakritogo Tipa "Torgovy" Dom Potomkov Postavchtchika Dvora Ego Imperatorskago Velitschestva P.A. Smirnova
- Opponents
- UDV North America Inc
- Opposition
- Sections 3(6); 5(2)(b); 5(4)(a)
Result
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
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.
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.