Trade mark decision

BL Number

O/404/02

Decision date

14 October 2002

Hearing officer

Mr D Landau

Mark

BERLUCCI

Classes

25

Applicant

Stylewise (UK) Limited

Opponent

Berluti SA

Opposition

Section 5(2)(b)

Result

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

Points Of Interest

• In opposition proceedings there is an onus on the opponent to substantiate his grounds of opposition. The applicant need take no action if it so wishes. Request for aggravated costs dismissed.

Summary

The opponents opposition was based on their ownership of a registration for the mark BERLUTI in Class 25 in respect of the same and similar goods as those of the applicant. They also filed some evidence of modest use but this did not add to the distinctive character of their mark.

In his comparison of the respective marks BERLUTI and BERLUCCI the Hearing Officer noted that the applicants mark as filed was slightly stylised in that it appeared to be in the form of a clothing label. However, he considered it to be a BERLUCCI mark and that the comparison of the two marks could be made on a normal basis.

In comparing the two marks the Hearing Officer was of the view that they would be seen as Italian surnames. Thus they had a similar conceptual association. The Hearing Officer also considered that the two marks were similar aurally and visually, and taking imperfect recollection into account he considered that overall the marks BERLUTI and BERLUCCI were confusingly similar. Opposition thus succeeded.

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URL: http://www.bailii.org/uk/cases/UKIntelP/2002/o40402.html