Trade mark decision

BL Number

O/285/04

Decision date

21 September 2004

Hearing officer

Mr G Salthouse

Mark

DEVICE ONLY

Classes

30

Applicant

Mars U.K. Limited

Opponent

Ludwig Schokolade GmbH & Co. KG

Opposition

Sections 1(1) & 3(1)(a) & (b) & 3(2)(c)

Result

Sections 1(1) & 3(1)(a): - Opposition failed.

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

Section 3(2)(c): Not considered.

Points Of Interest

• 1. See also BL O/284/04, BL O/286/04, BL O/287/04, BL O/288/04 and BL O/289/04.

Summary

The opponent in this case is a German manufacturer of confectionary products including chocolate bars and it claimed to have provided chocolate bars of a similar shape and style from 1990 onwards to a number of UK firms such as Aldi, Asda and Iceland who sell them under various inhouse marks.

The opponent claimed the applicant’s mark was not distinctive and that the evidence filed in support of the application was obtained some years after the filing date of 4 October, 1995.

The mark in suit proceeded to advertisement on the basis of distinctiveness acquired through use. The BOUNTY bar has been produced since 1951 and there has been massive sales and promotion of this product since that date. It is in fact a market leader in relation to chocolate bars filled with coconut. The opponent also filed the results of two market surveys which showed that the chocolate bar is widely recognised by the general public as being a BOUNTY bar.

Under Section 1(1) and 3(1)(a) the Hearing Officer decided that the mark in suit was in theory registrable if the applicant was able to educate the public to see the shape and decoration as a trade mark denoting only its goods or services. Opposition failed on this ground.

Under Section 3(1)(b) the Hearing Officer decided that the mark in suit was not acceptable in the prima facie and went on to consider the evidence filed in support of the application. As regards the sale of a BOUNTY products and their promotion the Hearing Officer noted that neither the packaging nor the promotional material showed the mark in suit. As regards the survey evidence, one of the surveys had to be disregarded since those surveyed were shown a whole bar of BOUNTY and not a part of a bar as depicted in this application. As regards the second survey the Hearing Officer considered that it had some defects in that not all the responses were recorded, though they were coded to specific headings. Also they were shown photographs of various chocolate products, including the mark in suit but this is not in fact how the goods are selected by consumers. In reality the goods are sold in wrappers with the mark BOUNTY thereon and thus the normal customer would not in fact see the claimed mark at the time of purchase. There would certainly be no selection by shape. Overall the Hearing Officer considered that the applicant had failed to satisfy the proviso of Section 3(1) of the Act. Opposition successful on this ground.

Section 3(2)(b) not considered