Trade mark decision

BL Number

O/102/04

Decision date

14 April 2004

Hearing officer

Mr M Reynolds

Mark

VEGETABALLS

Classes

29

Applicant

Unilever Plc

Opponent

Podravka Prehrambena Industrija D.D.

Opposition

Sections 3(1)(b); 5(2)(b); 5(3) & 5(4)(a)

Result

Section 3(1)(b) - Opposition failed.

Section 5(2)(b) - Opposition partially and provisionally successful.

Section 5(3) - No formal finding.

Section 5(4)(a) - No formal finding.

Points Of Interest

• 1. Reductions in opponents’ specification after commencement of proceedings; consideration to be based on later reduced specification.
• 2. Comparison of goods; ‘soups’ not same as ‘prepared meals’.

Summary

The opposition under Section 5 was based on use and registrations of the opponents’ 'VEGETA' marks, in Classes 29 and 30. The application specified "vegetables" prepared meals containing vegetables".

Under Section 3(1)(b) the Hearing Officer concluded that whilst the mark could not command anything other than a modest degree of distinctiveness its "allusive quality was sufficiently clever and marked to enable it to avoid objection under Section 3(1)(b)".

Under Section 5(2)(b) the Hearing Officer dealt separately with the opponents' two UK registrations and one Community Trade Mark application in turn as different considerations applied in relation to each of them. The marks were VEGETA (stylised) in Class 29, 'With VEGETA Dishes Taste Better' in Classes 29 and 30, and 'vegeta' in Classes 29 and 30. The opponents argued, inter alia, that the principal and dominant part of the applicants’ mark was the word VEGETA; the BALLS element would be seen as no more than a descriptive indicator, as in eg 'meat balls', 'prawn balls' etc.

Taking first the mark VEGETA (stylised) the Hearing Officer noted that the opponents had, since the commencement of these proceedings, partially surrendered their specification of goods, which now read 'bouillons; none being semi-prepared or prepared meals'. The Hearing Officer decided to base his assessment on this latter specification as he did not agree that a proprietor should be in a stronger position when a surrender has been made voluntarily than he would have been had his specification been reduced in response to a formal revocation action. As the reduced specification now did not include any goods similar to those of the applicants the Section 5(2)(b) action failed in respect of the first registration.

Turning next to the registration 'With VEGETA Dishes Taste Better', the Hearing Officer found some goods to be identical and some to have a 'low degree of similarity', to those in the applicants' specification; ('Soup', however, he found, could not be considered similar to 'prepared meals'). Comparing the marks, however, he was not able to conclude that there was a likelihood of confusion. The Section 5(2)(b) objection therefore failed in respect of that registration also.

Finally, under Section 5(2)(b), the Hearing Officer considered the case of the opponents' Community Trade Mark application, 'Vegeta', in Classes 29 and 30. Here he found that, if used in relation to identical goods or in close proximity to one another, the ‘read-through’ from the marks to the goods would create a likelihood of confusion. He was not so persuaded, however, in cases where the goods were not identical or would in practice be separated in trade. The opposition was thus partially successful.

The Hearing Officer noted that the opponents had not established reputation and he therefore gave no further consideration to the grounds under Sections 5(3) and 5(4)(a).

He proposed to issue a supplementary decision when the fate of the opponent’s ‘Community Trade Mark application was known.