Trade mark decision

BL Number

O/346/03

Decision date

12 November 2003

Hearing officer

Dr W J Trott

Mark

BIG BITES SANDWICHES

Classes

12, 25

Applicant

Renown Leisure Limited

Opponent

7-Eleven Incorporated

Opposition

Section 5(2)(b)

Result

Section 5(2)(b): - Opposition failed.

Points Of Interest

• The opponent appealed the Hearing Officer’s decision in respect of Class 42 to the Appointed Person. In his decision dated 27 April 2004 (BL O/202/04) the Appointed Person allowed the appeal and reversed the Hearing Officer’s decision in relation to Class 42.

Summary

The opponent’s opposition was based on their ownership of registrations of the mark BIG BITES in Classes 29 and 30 in respect of a range of food products. No evidence of use of the opponent’s mark was filed in the proceedings but they did file evidence to show that a number of restaurants also sold promotional items of clothing at their premises.

The applicant’s predecessor stated that from 1987 he and his wife had sold sandwiches in the Basingstoke area under the name BIG BITES SANDWICHES. In 1995 they moved to Devon and set up a business under the name Mid Devon Caterers and the name BIG BITES SANDWICHES was also used. This business was sold to the present applicant in 2001. In his evidence the applicant’s predecessor suggested that the mark BIG BITES was not distinctive and the present logo had been adopted in 2001 to give the mark a more distinctive character.

In considering the applicant’s evidence the Hearing Officer concluded that the use of the mark BIG BITES SANDWICHES had been subsidiary to the MID DEVON CATERERS mark and there was little to indicate that it had a separate and distinct reputation. Also while BIG BITES might not be overly distinctive the Hearing Officer noted that this mark had been accepted for registration on a prima facie basis and he decided that this mark, while having some descriptive connotations, also had a limited amount of distinctive character.

Under Section 5(2)(b) the Hearing Officer had little difficulty in deciding that the respective marks BIG BITES SANDWICHES and device and BIG BITES were very similar. However, the opponent’s foodstuffs were not similar to the applicant’s clothing application and that opposition against that application failed.

As regards the Class 42 application – the provision of food and drink – the Hearing Officer compared the respective goods and services in some detail before finally coming to the conclusion that the foodstuffs in Classes 29 and 30 were only marginally similar to the applicant’s services. Overall he considered that there was little likelihood of confusion bearing in mind, the descriptive nature of the opponent’s mark and opposition thus failed against the Class 42 application.