Trade mark decision

BL Number

O/173/04

Decision date

14 June 2004

Hearing officer

Mr J MacGillivray

Mark

DUOFRESH

Classes

03, 05

Applicant

Kiwi Europe oldings BV

Opponent

Reckitt Benckiser (UK) Ltd

Opposition

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

Result

Section 3(1)(b), (c) & (d) - Opposition failed

Section 5(2)(b) - Opposition successful (Class 3) Opposition failed (Class 5)

Points Of Interest

• 1. See also BL O/172/04
• 2. If the date of revocation is not prior to the date of application then the opponent has existing rights at the date of application (Section 46(6)).

Summary

The objection under Section 3 was based on a claim by the opponent that DUO is a combining form meaning ‘two’ and that combined with the descriptive word FRESH, produces a mark that in its totality has an obvious meaning such as double freshness etc. The objection under Section 5 was based on the ownership of a registration in Class 3 of the mark BLEACHMATIC DUO in respect of the same and similar goods as those of the applicant.

The applicant applied for the mark in suit on 17 January 2002 and applied to revoke the opponent’s registration on 14 August 2003. Revocation was granted with effect from that date. However, taking account of the provisions of Section 46(6) the opponent submitted that it had rights in its mark when the mark in suit was applied for on 17 January 2002.

Under Section 3 the Hearing Officer accepted that DUO is a combining form meaning ‘two’ but was not convinced that in combination with the descriptive word FRESH produced a mark which would be seen by the general public as descriptive of any characteristic of the goods or to have any real meaning in relation to the goods at issue. The Hearing Officer went on to conclude that the grounds under Section 3(1)(b) and (c) could not be sustained and, as the opponent had filed no evidence to support its claim under Section 3(1)(d), that ground also fell away.

Under Section 5(2)(b) the Hearing Officer compared the respective sets of goods and concluded that in Class 3 the respective goods were identical and similar. He also decided that the applicant's Class 5 goods were not similar to the opponent’s Class 3 goods.

As regards the respective marks DUOFRESH and BLEACHMATIC DUO the Hearing Officer was of the view that BLEACHMATIC was likely to be seen as a housemark and the dominant and distinctive element within the applicant’s mark was the word DUO, an element shared with the opponent’s mark. In their totalities the Hearing Officer decided that the two marks shared visual, aural and conceptual similarities and were in effect confusingly similar. The opponent was, therefore, successful in its opposition under Section 5(2)(b) in respect of the Class 3 application of the applicant but failed in respect of the Class 5 application.