Trade mark decision

BL Number

O/380/02

Decision date

19 September 2002

Hearing officer

Mr A James

Mark

BELLINI

Classes

14

Applicant

HHS Trading (UK) Plc

Opponent

Montres Rolex SA

Opposition

Section 5(2)(b)

Result

Section 5(2)(b) - Opposition successful

Points Of Interest

• 1. Usually the difference in initial letters is sufficient to distinguish marks but this is not always the case.

Summary

The opponents opposition was based on registrations for the marks CELLINI (in block capitals) and CELLINI (in script) in Class 14 for the same and similar goods as those of the applicants. The opponents also claimed user from 1965 onwards of both marks and to have promoted them extensively during this period. In use the CELLINI marks are often used in association with the opponents well known trade mark ROLEX. Goods sold under these marks are at the luxury end of the market.

The applicants also claimed user of their mark from 1999 onwards, mostly in slightly script form, in respect of watches and cases for watches at a modest price. They claimed that there was no evidence of confusion in the marketplace and that the respective marks were not confusingly similar.

Under Section 5(2)(b) the Hearing Officer noted that the respective goods were identical and went on to compare the respective marks BELLINI and CELLINI. He considered the opponents mark CELLINI to be a distinctive mark in relation to the goods at issue and that in normal and fair use the BELLINI mark as used (in script form) was similar to the script version of the CELLINI mark. Taking into account the evidence from trade sources about the likelihood of confusion and the fact that marks on jewellery and watches are in small print the Hearing Officer considered that in the case of identical goods there was a likelihood of confusion of the public. Opposition thus succeeded on this ground.