Decision Nº O/0561/24 from Intellectual Property Office - (Trade market), 18 June 2024
| Court | Intellectual Property Office (United Kingdom) |
| Judge | Mr James Hopkins |
| Date | 18 June 2024 |
| Administrative Decision Number | O/0561/24 |
| Registration Number | UK00003842488 |
O/0561/24
IN THE MATTER OF APPLICATION NO. 3842488
IN THE NAME OF ODNAC LTD
TO REGISTER THE FOLLOWING TRADE MARK:
FIIO
IN CLASS 21
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 438980
BY BORMIOLI ROCCO S.P.A
Page 2 of 33
Background and pleadings
1. On 25 October 2022, ODNAC LTD (“the applicant”) applied to register the trade
mark FIIO in the UK under number 3842488 (“the applicant’s mark”). Registration is
sought for the following goods:
Class 21: Drinking bottles for sports; drinking bottles; sports bottles [empty];
sports bottles sold empty; bottles; stands for bottles; perfume bottles; water
bottles; bottle pourers; biodegradable bottles; straws for drinking; brushes for
feeding bottles; water bottles for bicycles; drinking troughs; drinking straws;
drinking glasses; drinking cups; drinks containers; bottle coolers; plastic bottles;
vacuum bottles; reusable bottles; glass bottles; bottle buckets; bottle openers;
bottle gourds; biobased bottles; drip preventers for bottles; drinking flasks;
decorative sand bottles; empty spray bottles; bottle cleaning brushes; siphon
bottles for carbonated water; drinking vessels.
2. On 1 February 2023, Bormioli Rocco S.p.A (“the opponent”) opposed the applicant’s
mark under sections 5(2)(b) and 5(4)(a) of the Trade Marks Act 1994 (“the Act”).
3. For the purposes of its claim under section 5(2)(b), the opponent relies upon its UK
trade mark number 914285142,
1
FIDO (“the opponent’s mark”). The opponent’s mark
was filed on 23 June 2015 and became registered on 27 October 2015. It stands
registered for the following goods, all of which are relied upon under this ground:
Class 21: Household or kitchen utensils and containers (not of precious metal
or coated therewith); glassware, including vases, glass containers for foodstuff,
coupes, crucibles (laboratory), beverage glassware, bottles, jars, cups.
4. The opponent’s mark qualifies as an earlier trade mark in accordance with section
6 of the Act. As it had completed its registration process more than five years before
1
The opponent’s mark is a comparable trade mark based upon pre-existing EU trade mark number
14285142. On 1 January 2021, in accordance with Article 54 of the Withdrawal Agreement between the
UK and the EU, a comparable UK trade mark was automatically created. The comparable UK mark is
now recorded on the UK trade mark register, has the same legal status as if it had been applied for and
registered under UK law, and retains its original filing date.
Page 3 of 33
the filing date of the applicant’s mark, it is subject to the use requirements specified
within section 6A of the Act.
5. In its statement of grounds, the opponent contends that the competing marks are
similar and that the parties’ goods are identical or similar, resulting in a likelihood of
confusion. The opponent states that it has used its mark for all its goods.
6. As for section 5(4)(a), the opponent claims that it has significant goodwill in relation
to which it has used the sign FIDO (“the opponent’s sign”) throughout the UK since
1968. The goods for which the sign is said to have been used are household or kitchen
utensils and containers; glassware; vases; glass containers; coupes; crucibles,
beverage glassware; bottles; jars; cups. The opponent claims that use of the
applicant’s mark would be contrary to the law of passing off.
7. The applicant filed a counterstatement, denying the grounds of opposition. As these
are the only comments received from the applicant, they are reproduced in full, and
as written, below. The applicant also indicated that it would require the opponent to
provide proof of use in respect of bottles and glass containers.
8. The opponent is professionally represented by HGF Limited, whereas the applicant
represents itself. Only the opponent filed evidence. No hearing was requested and
only the opponent filed written submissions in lieu of attendance. This decision is taken
following careful consideration of all the papers before me.
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