Trade mark decision

BL Number

O/306/07

Decision date

17 October 2007

Hearing officer

Mr M Reynolds

Mark

WILD GEESE

Classes

25, 32, 33

Applicants

Lodestar Anstalt

Opponents

Austin Nichols & Co Incorporated DBA Pernod Ricard USA

Opposition

Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b): Opposition failed. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed.

Points Of Interest

• 1. These two parties have been in conflict in other countries and decisions have issued. The Hearing Officer declined to give much weight to these decisions in deciding this dispute in the UK.
• 2. The opponent appealed to the Appointed Person and the case was set down for hearing. On request by the opponent the Hearing was adjourned and the appeal was subsequently withdrawn. In her decision dated 27 June 2008 (BL O/180/08) the Appointed Person made an award of costs to the applicant.

Summary

The opponent’s opposition was based on its ownership of a registration in Class 33 of the mark WILD TURKEY. These proceedings only relate to the applicant’s Class 33 application. The Opponent filed evidence of use of its mark which showed that it was first used in the UK in 1967. Use has been in relation to Bourbon Whiskey and the Hearing Officer determined that identical and closely similar goods were at issue in this dispute. Much of the opponent’s detailed evidence related to the period 2000-2005 which was post the application date of 21 June 2000. Under Section 5(2)(b) the Hearing Officer was unable to conclude that the opponent had an enhanced reputation in its mark at June 2000.

The core of this dispute rested on a comparison of the respective marks WILD TURKEY and WILD GEESE and while the Hearing Officer accepted there was some similarity because of the presence of the word ‘WILD’ in both marks, he did not consider the marks to be conceptually similar. As the respective marks were not visually or aurally similar the Hearing Officer concluded that the marks were not confusingly similar and went on to find that opposition failed on the Section 5(2)(b) ground.

Opposition also failed on the Section 5(3) ground because the opponent had not proved that its mark was well known by a significant part of the public at the relevant date and on the Section 5(4)(a) ground on the basis that if it did have a goodwill and reputation at the relevant date and the respective marks were not similar.

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URL: http://www.bailii.org/uk/cases/UKIntelP/2007/o30607.html