Trade mark decision

BL Number

O/180/03

Decision date

26 June 2003

Hearing officer

Mr J MacGillivray

Mark

JAVA EXPRESS

Classes

42

Applicant

Hyperama Plc

Opponent

Colin T. Loftus & Keith Skinkis-Loftus t/a Java Bar Expresso

Opposition

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

Result

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

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

Points Of Interest

• 1. The opponents alleged two actual instances of confusion but the Hearing Officer noted that in both cases the applicant company had been properly identified and it was administrative errors which had caused documents to be sent to the wrong address. Where descriptive marks are used by parties some risk of confusion is likely and the Hearing Officer did not consider that it should impact on his comparison of the respective marks.
• 2. See also BL O/181/03 where the mark applied for was JAVA EXPRESS and device.
• 3. The opponents appealed to the Appointed Person but had been declared bankrupt by the date of the Hearing. Hearing Officer’s decision upheld in Appointed Person’s decision dated 10 May 2004 (BL O/126/04).

Summary

The opponents opposition was based on their ownership of two registrations in Class 42 of the mark JAVA BAR EXPRESS and device of a cocoa bean and the mark JAVA and device of a cocoa bean and claimed use of these marks. First use commenced in March 1997 and there had been continued use from that date, particularly in the Manchester area where the applicants also have a presence.

The applicants claimed the opponents had no monopoly in the word JAVA. They filed evidence to show that JAVA is a geographical area in Indonesia which is renowned for coffee beans; that a number of supermarkets sell a range of JAVA coffees and that a number of other companies use JAVA in their company names and as an element in trade marks. In his comparison of the respective marks under Section 5(2)(b) the Hearing Officer took full account of the applicants evidence and concluded that though the respective marks included the word JAVE, compared as wholes and taking account of the nature of the word JAVA, they were not confusingly similar. Opposition failed on this ground.

Under Section 5(4)(a) – Passing Off – the Hearing Officer concluded that the opponents were in no better position as compared to that under Section 5(2)(b) and found that they also failed on the Section 5(4)(a) ground.

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