Trade mark decision

BL Number

O/289/04

Decision date

21 September 2004

Hearing officer

Mr M Foley

Mark

DEVICE ONLY

Classes

30

Applicant

Mars UK Limited

Opponent

Asda Stores Limited

Opposition

Sections 1(1) & 3(1)(a), (b), (c) & (d), 3(2)(c) & 32(2)(b) & 39(2)

Result

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

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

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

Section 1(1)(d) - Opposition failed.

Section 3(2)(c) - Not considered

Section 32(2)(d) - Opposition successful.

Section 39(2) - Not considered.

Points Of Interest

• 1. See also BL O/284/04, BL O/285/04, BL O/286/04, BL O/287/04 & BL O/288/04

Summary

The opponent in this case is a major retailer of food products including confectionery. It files evidences from a German chocolate manufacturer Ludwig Schokolade who have produced a similar shaped chocolate product for sale in the UK from 1990 onwards. Ludwig says that they have supplied major UK stores such as Aldi, Asda and Iceland who sell the chocolate bars under various inhouse marks. Because the chocolate bars are essentially the same shape as the mark in suit it is claimed that the mark applied for cannot be capable of distinguishing the applicant's goods from those of other traders.

Another declaration from Nestle Rowntree states that there has always been confectionery with rounded ends and of a lozenge shape on the market. Also the wave or ripple decoration on the mark is not original. As regards the sale of such products, they are generally packaged and the public do not buy them on the basis of shape. They rely on the packaging get-up and brand names to identify the product wanted.

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 applicant also filed the results of two market surveys which showed that its chocolate bar is widely recognised by the general public as being a BOUNTY bar.

Under Section 32(2)(d) the opponent claimed that even though the applicant claimed a three dimensional mark, the mark as depicted did not display all sides of the chocolate bar; also the description referred to "a confectionery bar" and not the chocolate bar displayed as the mark. As regards the first point the Hearing Officer stated that the applicant would only have rights in the mark as displayed. He accepted that there was merit in the second claim and upheld the objection. This objection could, however, be overcome if the applicant amended the description of the mark from "a confectionery bar" to include a reference to the chocolate bar depicted as the mark.

Under Sections 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 BOUNTY products and their promotion the Hearing Officer noted that neither the packaging nor the promotional literature showed the mark in suit. Also the survey evidence was flawed to some extent in that not all the responses were recorded but were simply coded. In addition the public were shown a bar of BOUNTY chocolate (without the wrapper) and a photograph of the mark in suit and this is not how goods are in fact selected. In reality the goods are sold in wrappers with the mark BOUNTY thereon and thus the average customer would not 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.

As regards the ground under Section 3(1)(c) the Hearing Officer decided that the mark in suit was not a normal way of describing the types of goods or their characteristics, as included in the specification. Opposition failed on this ground.

Under Section 3(1)(d) the Hearing Officer noted that the 'Ludwig' bar had only been sold in the UK from 1990. As their bar has the same rounded ends and wave pattern of the applicant’s it claimed that the design is customary for such chocolate bars. The Hearing Officer did not accept this claim. If a company has a monolopy position in a market and a competitor enters the marketplace and copies the design of the product this does not make the design customary. Opposition failed on this ground.

In view of his decision under Section 3(1)(b) the Hearing Officer did not consider the grounds under Sections 3(2)(c) or 39(2).