Trade mark decision

BL Number

O/377/03

Decision date

2 December 2003

Hearing officer

Mr M Reynolds

Mark

LE SPOSE DI GIO'

Classes

25

Applicant

Di Gio SRL

Opponent

G A Modefine SA

Opposition

Sections 5(2)(b), 5(3) & 5(4)(a)

Result

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

Section 5(3): - Opposition failed.

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

Points Of Interest

• 2. The applicant appealed to the Appointed Person. In his decision dated 12 September 2005 (BL O/253/05) the Appointed Person dismissed the appeal and upheld the Hearing Officer's decision. The appeal raised the important question of English equivalents of foreign descriptive words and should be studied as the decision may lead to a change in the Registrar's practice in dealing with marks containing or comprising descriptive foreign words.
• 1. See also BL O/376/03 where the applicants applied for a slightly different mark.

Summary

The opponents opposition was based on their ownership of a registered community mark ACQUA DI GIO in Classes 3 and 25 and an earlier pending community mark GIO also in Classes 3 and 25. This latter mark is being opposed by the applicants in these proceedings.

The opponents also filed details of use of their marks in the form ACQUA DI GIO; ACQUA DI GIO POUR HOMME and GIO DE GIORGIO ARMANI but this use was of limited duration prior to the relevant date and appeared to be in respect of their Class 3 goods. In the light of this information the Hearing Officer decided that the opponents must fail in respect of their Sections 5(3) and 5(4)(a) grounds.

The essential ground of opposition in these proceedings was under Section 5(2)(b) where the Hearing Officer noted that identical goods were at issue. In comparing the respective marks ACQUA DI GIO and LE SPOSE DI GIO the Hearing officer observed that while ACQUA (meaning WATER) might be commonly used in relation to Class 3 goods, it had not been shown that this was so in relation to Class 25 goods. Also while the applicants application includes the Italian translation for LE SPOSE meaning "The Brides" which is indicative of the applicants goods (bridalwear) the public would be likely to view both marks as foreign word combinations. While the Hearing Officer considered the marks to be visually and phonetically different he noted that both marks contained the distinctive element DI GIO. He considered, with some hesitation, that this would be sufficient for consumers to think that goods sold under the respective marks came from the same trade source. The opponents thus succeeded on this ground.

With regard to the opponents other mark GIO, the Hearing Officer considered that the opponents would also succeed in respect of this mark if it achieved registration in Class 25 for the goods applied for.

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