Trade mark decision

BL Number

O/136/00

Decision date

17 April 2000

Hearing officer

Mr A James

Mark

ESP EASTENDERS

Classes

32

Applicant

David West

Opponent

Fuller Smith & Turner Plc

Opposition

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

Result

Section 5(2)(b) - Opposition successful

Section 5(4)(a) - Opposition not considered

Points Of Interest

• Aural similarity: It is essential in assessing the importance of aural similarity to take account of the nature of the trade in the goods in question. Thus, in this case, whilst visual means of selection may be primarily employed in off-licences or supermarkets, where get-up and packaging come into play, aural similarity is of higher importance when assessing the likelihood of confusion from trade in beers in public houses, restaurants etc, since this is a trade which relies heavily on word of mouth orders.

Summary

Opposition based on opponent's registration in Class 32 of the trade mark ESP in respect of beers. The mark in suit was restricted to lager and pilsners, but these were taken to be virtually the same goods. Whilst the Hearing Officer concluded that there was no conceptual or visual similarity between the marks, he was persuaded that the average consumer would shorten the mark in suit to ESP, and that the close aural similarity between the marks would create a likelihood of confusion, especially in public houses and licensed restaurants, and given that he felt able to infer from the evidence that the mark ESB had acquired a highly distinctive character by the relevant date (Premier Brands UK Ltd v Typhoon Europe Ltd distinguished). The opponent's sales under the mark in suit from his stores in Channel Ports in France and Belgium could not be taken to indicate absence of a likelihood of confusion if the mark was put into normal and fair use in the UK, and in any case honest concurrent user did not give the Registrar discretion to register the later mark. Opposition under Section 5(2)(b) therefore succeeded, and since the opponent could not say that he had a better case under Section 5(4)(a) the Hearing Officer saw no reason to consider that ground.

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