Trade mark decision

BL Number

O/043/04

Decision date

12 February 2004

Hearing officer

Mr D Landau

Mark

FROM THE MAKERS OF BIOTEX BLACK KEEPS DARK COLOURS STRONGER FOR LONGER

Classes

03

Applicant

Biotex BV

Opponent

Reckitt Benckiser (UK) Limited

Opposition

Sections 3(1)(a); 3(1)(b); 3(1)(c); 3(1)(d) & 3(3)(b)

Result

Section 3(1)(a) - Opposition dismissed

Section 3(1)(b) - Opposition succeeded

Section 3(1)(c) - No formal finding

Section 3(1)(d) - No formal finding

Section 3(3)(b) - Opposition successful

Points Of Interest

• 1. Section 3(3)(b) : mark deceptive in relation to goods specified.
• 2. Section 3(1)(b) : normal and fair use; the consumer cannot be expected to "hunt for the trade mark significance".

Summary

The application specified "detergents; biological laundry detergents; detergents for commercial, domestic and laundry use". Under Section 3(3)(b) the opponents alleged that as the specification covered all types of detergents and was not restricted to being for use only in relation to black or dark colours this could lead to deception of customers. Consumers might also believe it contained some form of dye. Registration would thus be contrary to Section 3(3)(b).

The Hearing Officer addressed this aspect first, though he saw no basis for the second part of the allegation. He noted that there was a dearth of case law in relation to Section 3(3)(b), and he reviewed such guidance as existed. In conclusion he noted the discrepancy between the claim incorporated in the mark and the absence of any such limitation in the specification. The applicants could have used Article 13 of the Directive to limit the specification but they had not done so. The mark was deceptive in relation to the totality of the specification and the opposition under Section 3(3)(b) succeeded accordingly.

In case he should be found wrong in this; the Hearing Officer went on to consider the remaining grounds. The objection under Section 3(1)(a) was dismissed.

The written matter in the mark included the words "from the makers of Biotex". The Hearing Officer found that even in normal and fair use the ‘Biotex’ element could appear on a different plane; effectively invisible to the customer. The rest of the mark was hopeless. The opposition under Section 3(1)(b) therefore succeeded. The Hearing Officer went on to find that registration of the mark would hinder competition. He did not go on to consider the remaining grounds.