Trade mark decision

BL Number

O/233/01

Decision date

21 May 2001

Hearing officer

Mr A James

Mark

DONUTS 'N' COMPANY

Classes

30

Applicant

Donuts & Company Limited

Opponent

Dunkin’ Donuts Inc

Opposition

Sections 3(6); 5(2)(b); 5(4)(a) & 56

Result

Section 3(6): - Opposition failed.

Section 5(2)(b): - Opposition failed.

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

Section 56: - Opposition failed.

Points Of Interest

• 1. Does a voluntary limitation have the same effect on the scope of protection, as a voluntary disclaimer under Section 13?
• 2. "The existence of an earlier franchise arrangement between the parties (is not) sufficient to elevate mere similarity of marks to a ground of objection (under Section 3(6))".
• 3. Comparison of marks: DONUTS & Co v DUNKIN DONUTS

Summary

The Hearing Officer found that the opponents had not established their claim of a ‘well-known’ mark and he went on to consider the case under Section 5(4)(a). In this he found that the differences in the respective marks were enough to avoid misrepresentation, which was an essential component in a case under passing off. Under Section 5(2)(b) the Hearing Officer again found that the differences between the marks avoided the likelihood of confusion. He also found that the case under Section 3(6) had not been made.

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URL: http://www.bailii.org/uk/cases/UKIntelP/2001/o23301.html