Trade mark decision

BL Number

O/148/03

Decision date

30 May 2003

Hearing officer

Mr A James

Mark

MISCELLANEOUS ONLY MARK

Classes

04

Applicant

Alexander Duckham & Co

Opponent

Fuchs Lubricants (UK) Plc

Opposition

Sections 1(1), 3(1)(a), (b), (c) & (d), 5(4)(a) & 39(2)

Result

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

Sections 3(1)(b), (c) & (d) - Opposition successful.

Section 5(4)(a) - Opposition failed.

Section 39(2) - Opposition partially successful. Date of application amended to later date.

Points Of Interest

• 1. The Hearing Officer allowed submissions after the hearing in relation to a recent case before the ECJ.
• 2. Award of costs reduced because of vague pleadings by the opponent and the quoting of grounds which were not abandoned until a late stage in the proceedings.

Summary

The opponent’s opposition was based on a claim that the mark applied for was not a trade mark, that it was not distinctive, that they had sold identical goods coloured green for many years and that the mark now at issue was different from that applied for and the amendment should not have been allowed by the Registrar.

As regards amendment of the mark applied for, the initial application had been for the colour green and it was some time later that the scope was reduced to green identified by Pantone No 3435. The Hearing Officer accepted that the application had not been put into acceptable form until the Pantone No was added and he decided that the filing date should be amended to the date when the application was acceptable to the Registrar.

The applicants claimed extensive use of their mark from 1955 onwards with extensive turnover and promotional expenditure of some £3m in 1998 following a re-launch. Extensive evidence was filed in support of the application together with trade evidence attesting to the fact that the colour green was distinctive of the applicant’s oils.

The opponent’s claimed that they had sold green coloured oils from 1971 onwards but on a much reduced scope as compared to the applicants. The opponent admitted that their oils had never been sold with reference to colour. The opponent’s evidence also referred to the fact that another firm had sold green coloured oil during the period 1960-1985. A statement from the British lubricants Federation indicated that that organisation did not consider it in the interests of its members for any one firm to be granted a monopoly of a particular colour.

The Hearing Officer dismissed the ground under Section 5(4)(a) –Passing Off – with little consideration since the opponents had admitted that they had not sold their goods with reference to the colour of those goods. Opposition failed on this ground.

With regard to the ground under Sections 1(1) and 3(1)(a) the Hearing Officer had regard to recent proceedings before the ECJ before confirming his view that the mark applied for was capable of being a trade mark. Opposition failed on this ground.

It was accepted that the mark applied for was not acceptable in the prima facie so the Hearing Officer considered the considerable volume of evidence carefully in relation to acquired distinctiveness. He decided to refuse the mark for the following reasons:

a) Although the applicant has taken steps to educate consumers that its oil is green, such promotional activity appears to have been in decline in the years leading up to the date of the application;

b) Further, the green “prompts” given in the applicant’s promotional material are not use of the mark applied for but merely a means of encouraging the public to pay attention to the specific colour of its engine oil;

c) Although a significant proportion of trade consumers are aware of the applicant’s mark and believe that the applicant is the only producer of green engine oil, the opponent’s evidence (and indeed some of the applicant’s evidence) shows that there are a significant number of trade consumers who are aware of other green engine oils, including those of the opponent;

d) It appears that in recent years the applicant has had a relatively small share of the “workshop” market (which is also the market the opponent has a presence in) but has retained a proportionally larger share of the retail market for engine oil;

e) However, the applicant has provided no evidence for end consumers in its largest market sector for which it could be properly inferred that its advertising has had the desired effect on the ordinary vehicle owning public;

f) The existence of green dyed two stroke engine oil is a reason to believe that at least one section of the ordinary vehicle owning public would not have regarded green engine oil per se as distinctive of the applicant at the relevant date;

g) There is not sufficient evidence that trade or end consumers rely upon the colour of the applicant’s engine oil in order to distinguish its products in the course of trade.

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