Trade mark decision

BL Number

O/086/02

Decision date

22 February 2002

Hearing officer

Dr W J Trott

Mark

DAN DAIRIES

Classes

29

Applicant for Invalidity

Compagnie Gervais Danone

Registered Proprietor

Dan Dairies (UK) Ltd

Invalidity

Sections 47(2)(a) & (b) & Sections 5(2)(b) & 5(4)(a)

Result

Sections 47(2)(a) & 5(2)(b) - Invalidity action failed

Sections 47(2)(b) & 5(4)(a) - Invalidity action failed

Points Of Interest

• 1. Following advertisement of the mark at issue the applicants in these proceedings had launched opposition proceedings. Such proceedings had been deemed abandoned because of a failure by these applicants to filed evidence in support of their opposition. At the hearing in these proceedings the registered proprietor requested “striking out of the proceedings” on the basis of abuse of process, consent, estoppel or some other form of res judicata. The applicants argued that these matters had been raised too late in the proceedings and in any event were not relevant in relation to the present proceedings because the earlier proceedings had not been decided. No final ruling given by the Hearing Officer in view of his decision under Sections 5(2)(b) and 5(4)(a)

Summary

The applicants request for a declaration of invalidity was based on their ownership of a number of registrations for the mark DANONE in respect of the same and similar goods to those covered by the registered mark DAN DAIRIES. The applicants also filed details of user of the mark DANONE and variations thereof in relation to a range of dairy products. Other marks such as DANINO, DANIO and DANETTE were mentioned in the applicants declaration but there was insufficient supporting evidence to establish use or reputation in such marks.

Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and went on to compare the respective marks DAN DAIRIES and DANONE. The Hearing Officer determined from the evidence filed by the applicants that they had not established any reputation in the DAN element of their mark. He concluded that the respective marks were very different and that there was no likelihood of confusion of the public or any likelihood that the public would assume a connection between the two marks. The invalidity action thus failed on this ground.

The Hearing Officer also decided that the applicants would have no better case under Section 5(4)(a) - Passing Off - and did not consider that ground further.

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