Trade mark decision

BL Number

O/112/08

Decision date

16 April 2008

Hearing officer

Mr M Reynolds

Mark

WARKA

Classes

32

Application for Invalidation

Grupa Zywiec SA

Registered Proprietor

Sergei Yeshin

Invalidity

Sections 47(1) & 2) based on Sections 3(6) & 5(4)(a)

Result

Section 3(6): Opposition successful. Section 5(4)(a): Opposition successful.

Points Of Interest

• As described

Summary

The mark in suit has a registration date of 5 September 2006. The application was made by a Mr Nicholas Owen who changed his name to Sergei Yeshin on 20 September 2006.

The applicant for invalidity claimed in its opposition and filed evidence to substantiate those claims that the mark WARKA has been used by it and its predecessors to identify beer in Poland for well over 500 years. There has been modest sales to the Polish community in the UK since 2003 and this supports a claim to passing off under Section 5(4)(a). As regards the ground under Section 3(6), bad faith, the applicant suggests that the registered proprietor must have been aware of the applicant’s trading activities in Poland and the UK and points to the fact that the registered proprietor also tried to register another famous Polish brand name TYSKIE. Extracts from the proprietor’s web-site showed similarity of packaging with the applicant’s get-up and also use of the date 1478, the date production commenced and first use of the mark WARKA in Poland.

The registered proprietor filed no evidence but claimed in his Counterstatement that as the mark WARKA was not a registered trade mark in the UK when he adopted it and filed his application, he was perfectly entitled to make the application and claim proprietorship of the mark in the UK. There was no challenge to the applicant’s evidence as regards use and its claim to bad faith.

As regards the ground under Section 3(6) the Hearing Officer noted that the registered proprietor was silent as to how he had become aware of the mark WARKA and he also observed that the proprietor had not made any claim to have coined the mark himself. Additionally he did not say what searches, if any, he had carried out to ensure that the mark was not being used by others before he made his application. Taking all the circumstances into account the Hearing Officer concluded that the application was successful in its ground of opposition under Section 3(6).

While the evidence of use filed in support of the ground under Section 5(4)(a), passing off, was modest the Hearing Officer noted that the evidence was unchallenged. Overall the Hearing Officer concluded that the opponent had a reputation and goodwill in its mark in relation to Polish beer in the UK, particularly amongst the Polish sector of the population. Opposition thus successful on this ground as use of an identical mark by another party would lead to deception and confusion and cause damage to the opponent’s trade.