Trade mark decision

BL Number

O/160/08

Decision date

9 June 2008

Hearing officer

Mr Richard Arnold QC

Mark

SOUTH BECK

Classes

33

Applicant

Air Parts Europe Limited

Opponent

Inbev SA

Opposition

Sections 5(2)(b) & 5(4)(a)

Result

Section 5(2)(b): Appeal dismissed. Opposition failed. Section 5(3): Appeal dismissed. Opposition failed.

Points Of Interest

• Calculation of award of costs to private litigants.

Summary

In his decision dated 27 November 2007 (BL O/348/07 the Hearing Officer found that the opponent failed on the three grounds of opposition listed above. The opponent appealed the grounds under Sections 5(2)(b) and 5(3) to the Appointed Person. The decision in respect of the ground under Section 5(4)(a) was not appealed.

On appeal the opponent submitted that the Hearing Officer had made three errors of law in his comparison of the respective marks SOUTH BECK and BECK’S. In particular he had failed to give sufficient weight to the distinctive character of the opponent’s mark and the likelihood that this element would still be recognised in the applicant’s mark. Also, in accessing the evidence he had wrongly relied upon the opponent’s evidence as establishing that the word “beck” would be recognised as another term for a stream, brook or small river. The evidence in question had been in relation to examples of marks used in relation to spring water and would not have the same force in relation to wines and spirits. Finally the opponent submitted that the Hearing Officer had failed to consider fully the evidence from trade declarants.

The Appointed Person carefully considered the claims made by the opponent but he rejected all of them and upheld the Hearing Officer’s decision. In his view the Hearing Officer had compared the respective marks as wholes taking account of all the relevant factors and he agreed with the Hearing Officer that the respective marks were not confusingly similar. He also noted that the opponent accepted that there was no confusion between its mark BECK’S and the existing registered mark GRAHAM BECK. As regards the evidence points the Appointed Person noted the dictionary meaning of beck as meaning a stream and as regards the trade declarants he concluded, as the Hearing Officer had done, that they did not assist the opponent’s case. Appeal dismissed.

On the question of costs the Appointed Person offered guidance to the Registrar as to the calculation of an award of costs to private litigants. In the circumstances of this case the costs award to the applicant was reduced from £1600 to £865.