BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!
 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
United Kingdom Intellectual Property Office Decisions |
||
|
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> STALINSKAYA (Trade Mark: Invalidity) [2006] UKIntelP o02406 (19 January 2006) URL: http://www.bailii.org/uk/cases/UKIntelP/2006/o02406.html Cite as: [2006] UKIntelP o02406, [2006] UKIntelP o2406 |
||
[New search] [Printable PDF version] [Help]
For the whole decision click here: o02406
Result
Section 47(2)(a) & (b) based on Sections 5(2)(b), 5(3) & 5(4)(a): - Invalidity successful in respect of Classes 33 and 35. Failed in respect of Class 39.
Points Of Interest
Summary
The applicant owns a registration for the mark STOLICHNAYA in Class 33 in respect of vodka which is the same and similar goods as those of the mark in suit in respect of its Class 33 registration and similar to its Class 35 services which are in effect retail services. The Hearing Officer decided later in his decision that the goods of the applicant are not similar to the transport services of the registered proprietor in Class 39 and that the invalidity failed in respect of that Class.
The applicant filed details of use of its mark from as far back as 1954 and the Hearing Officer accepted that the applicant had a reputation and goodwill in its mark in relation to vodka at the relevant date. The registered proprietor suggested in its evidence that the presence of the known word STALIN in its mark was a distinguishing feature and that the respective marks were not similar.
The Hearing Officer compared the respective marks STALINSKAYA and STOLICHNAYA under Section 5(2)(b). He did not think the presence of the word STALIN would impact greatly on the general public and while there was differences in the two marks both had the same beginnings and endings. Overall he concluded that the marks were similar and that invalidity succeeded in respect of Classes 33 and 35.
The applicant also succeeded in the grounds under Sections 5(3) and 5(4)(a) in respect of Classes 33 and 35 because of its proved reputation and goodwill in its mark and the fact that the Hearing Officer had decided that the respective marks were similar.
