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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> PEACHCANEI (Trade Mark: Invalidity) [2005] UKIntelP o11805 (27 April 2005) URL: http://www.bailii.org/uk/cases/UKIntelP/2005/o11805.html Cite as: [2005] UKIntelP o11805 |
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For the whole decision click here: o11805
Result
Section 47(1) based on Sections 3(1)(b), (c) & (d); 3(3)(b) & 3(6) - Invalidity action failed.
Section 47(2) based on Section 5(2)(b): - Invalidity action failed.
Points Of Interest
Summary
The applicant claimed that the registered proprietor's marks consisted essentially of the word CANEI and that this word was a well known Italian dialect term for the town of Canelli which has a reputation for producing wines. Thus the registered marks were not distinctive and, in use, would be deceptive if used on wines other than wines from Canelli. The applicant also claimed that the marks at issue had not been used in respect of all the goods of the registered specifications and the registered proprietor had no intention to use its marks in respect of such goods. Similarity of the registered proprietor's marks with registered marks of the applicant, CANEY and device, CANTINO and CANTOR was also claimed.
The registered proprietor provided details of use of its marks in respect of a wine based cocktail and the Hearing Officer accepted that this represented use of the goods listed in the respective specifications.
The applicant also filed evidence as to the nature of the registered proprietor's trade and again stated that CANEI is well known as meaning CANELLI in Italy. No evidence as to such use or knowledge in the UK was filed.
Under Section 5(2)(b) the Hearing Officer compared the respective specifications and decided that identical and similar goods were at issue in Class 33. He then went on to compare the respective marks CANEI, PEACHCANEI and CANEI (script) plus descriptive wording with the applicant's marks CANEY and device, CANTINO and CANTOR. Overall he considered that the respective marks were not confusingly similar and in the case of CANEI and CANEY and device, took account of the fact that the word CANEY is subject to a disclaimer on the Register. Invalidity failed on this ground.
With regard to the ground under Sections 3(1)(b), (c) & (d) and 3(3)(b) the Hearing Officer considered that as no evidence had been filed to show that CANEI is known as a reference to the town of CANELLI in the UK nor was there any evidence to show that CANELLI is known in the UK or that it has a reputation for wine the claim could not be substantiated. The Hearing Officer, therefore, rejected this ground.
In the Hearing Officer's view the objection under Section 3(6) did not even get off the ground since the registered proprietor had shown use in relation to wine products and wine was the essential basis of its specifications. Ground dismissed.
