Trade mark decision

BL Number

O/050/04

Decision date

10 March 2004

Hearing officer

Mr J MacGillivray

Mark

FORM ONLY MARK

Classes

29, 32

Applicant

Kabushiki Kaisha Yakult Honsha

Opponent

Malaysia Dairy Industries Pte Ltd

Opposition

Sections 3(1)(b), 3(2)(b) & 5(2)

Result

Section 3(1)(b): - Opposition successful.

Section 3(2)(b): - Opposition failed.

Section 5(2): - Not considered.

Points Of Interest

• 1. See associated cases BL O/051/04, BL O/052/04 and BL O/053/04.

Summary

The mark in suit proceeded with the assistance of evidence of use and survey evidence. In the proceedings the applicant also contended that the mark was distinctive in the prima facie.

In support of their opposition under Section 3(1)(b) the opponent also filed survey evidence as regards public recognition of the mark in suit and claimed a figure of some 14%. They also criticized the survey evidence filed by the applicant in support of their mark.

As regards the prima facie case the Hearing Officer considered the additional expert evidence which was before him; recent judicial authority and reviewed the mark in its totality. Taking an overall view of the various elements the Hearing Officer had little difficulty in reaching the conclusion that the mark in suit was not distinctive in the prima facie.

In considering the proviso to Section 3(1)(b) the Hearing Officer accepted that the applicant was a major trading company in this particular area of trade. It was likely therefore that their mark YAKULT was well known and that their container was recognized to some extent with that name. However, the goods were always sold with the word mark YAKULT shown prominently and the survey evidence in support of the application had some serious flaws. Nor did the expert evidence assist. Overall the Hearing Officer concluded that the mark in suit had not acquired a distinctive character at the date of the application and that it was devoid of distinctive character. Opposition succeeded on this ground.

The question under Section 3(2)(b) was whether or not the shape of goods was necessary to obtain a technical result. The opponent argued that the shape of the bottle in this case was necessary from a manufacturing point of view but the Hearing Officer thought this unlikely. As the relevant goods in this case have no shape the Hearing Officer expressed the opinion that the container shape was not utilitarian and that it had some aesthetic appeal. Opposition failed on this ground.

In view of his decision under Section 3(1)(b) the Hearing Officer decided not to consider the Section 5(2) ground.