Trade mark decision

BL Number

O/196/00

Decision date

13 June 2000

Hearing officer

Mr M Reynolds

Mark

SOUTH BEACH CAFÉ

Classes

21, 42

Applicants

South Beach Café Inc

Opponents

St Rose Heights Development Ltd

Opposition

Section 5(2)

Result

Section 5(2): - Opposition successful in relation to Class 42...

.. Unsuccessful in relation to Class 21...

Points Of Interest

• 1. Restriction of Specification. Counsel for the applicants suggested that if the Hearing Officer found against her clients in relation to certain goods and beverages; then they would be prepared to restrict their specification to exclude the provision of such goods. The Hearing Officer refused this request since Café services encapsulate a type of service which could not be artificially split up into separate elements.
• 2. See also under BL O/195/00.
• 3. See also BL O/250/00. Amendment of clerical error

Summary

The opponents based their opposition on the ownership of the mark SOUTH BEACH registered in Classes 30 and 32 in respect of "Coffee and tea and coffee and tea beverages" and "non-alcoholic beverages, fruit flavoured beverages." There was no dispute that the respective marks were very similar and the Hearing Officer went on to compare the opponents goods with the café services offered by the applicants (Class 42).

The opponents had filed evidence to the effect that many firms sold eg coffee and non-alcoholic beverages and also provided such goods by way of Café services. Examples included Pret a Manager and Whittards of Chelsea among many others. It was also shown that such firms had registrations for both goods and services. The Hearing Officer concluded that there was a likelihood of confusion if different traders use very similar marks on related goods and services as is the case here. A similar decision had been reached by OHIM in proceedings between these two parties in relation to the applicants Class 42 application.

In relation to the Class 21 application the Hearing Officer held that there was no similarity between the respective goods and that that part of the application could proceed.

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