Trade mark decision

BL Number

O/036/07

Decision date

1 February 2007

Hearing officer

Mr D Landau

Mark

SAGE & device of a plant (Series of 2)

Classes

05, 29, 30, 32

Applicant

Sage Organic Limited

Opponent

The Sage Group Plc

Opposition

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

Result

Section 3(3)(b): Opposition successful in respect of certain goods. Section 5(2)(b): Opposition successful in respect of certain goods. (combined effect meant application refused in its entirety)

Points Of Interest

• None

Summary

The opponent owns the mark THE SAGE GATEHEAD registered in Classes 5, 29, 30 and 32 in respect of identical and similar goods as those of the applicant. It also owns the mark SAGE registered as a community trade mark in a range of classes including Class 42 for “the provision of food and drink”.

Under Section 3(3)(b) the Hearing Officer noted the descriptive nature of the mark applied for and, in respect of some of the goods applied for, the public could well expect such goods to contain sage or be flavoured with sage. As the specifications applied for contained no such restriction the ground under Section 3(3)(b) was successful in respect of certain goods.

Under Section 5(2)(b) the Hearing Officer first of all compared the mark in suit with the mark THE SAGE GATESHEAD. In respect of goods were SAGE was descriptive there was no conflict but in respect of the remaining goods the marks were very close since GATESHEAD would be seen as a geographical location. As identical goods were at issue the Hearing Officer found the opponent to be successful on this ground in respect of ‘the non-descriptive’ goods.

As regards the community registration for SAGE in Class 42 the Hearing Officer concluded that some of the applicant’s goods in Class 32 were similar to the opponent’s services. The opponent was therefore successful in its opposition in respect of such goods under Section 5(2)(b).