Decision Nº O/057/22 from Intellectual Property Office - (Trade market), 24 January 2022

JudgeMr D Collins
Administrative Decision NumberO/057/22
Registration NumberUK00003495392
CourtIntellectual Property Office (United Kingdom)
Date24 January 2022
BL O/057/22
TRADE MARKS ACT 1994
IN THE MATTER OF TRADE MARK APPLICATION 3495392
BY
PROSECCO INTERNATIONAL LIMITED
TO REGISTER THE FOLLOWING TRADE MARK:
AND
OPPOSITION NO. 422452 THERETO
BY
ENOITALIA S.P.A
2
Background and pleadings
1. On 31 May 2020, Prosecco International Limited (the applicant) applied to register
the trade mark as shown on the cover of this decision. The contested application was
accepted, and published for opposition purposes in the Trade Marks Journal on 18
September 2020. Registration of the mark is sought in respect of the following goods:
Class 33 Alcoholic wines; Beverages containing wine [spritzers]; Natural
sparkling wines; Wine coolers [drinks]; Wine-based aperitifs;
Wines; Rose wines; Sparkling red wines; Sparkling white wines;
Sparkling wines; Prepared wine cocktails; Still wine.
2. On 14 December 2020, Enoitalia S.p.A (the “opponent”) opposed the application
under Section 5(2)(b) of the Trade Marks Act 1994 (“the Act”), on the basis of three
earlier European Union Trade Marks (EUTMs):
EUTM 010350254 (the ‘-254’ mark)
BELLA BELLINA
Filing date: 18 October 2011
Registration date: 29 February 2012
Class 33: Alcoholic beverages (except beers).
EUTM 003147006 (the ‘-006’ mark)
BELLINO
Filing date: 28 April 2003
Registration date: 21 July 2005
Class 33: Wines, spirits and liqueurs, not for use in the preparation of wine, spirit
and liqueur containing chocolate goods.
EUTM 003171915 (the ‘-915’ mark)
BELVINO
Filing date: 19 May 2003
Registration date: 16 June 2004
Class 33: Wines, spirits and liqueurs.
3
3. The opponent relies upon the entire list of goods for which each of the earlier marks
are registered for the purposes of this opposition.
4. In its notice of opposition, the opponent submitted that the application is highly
similar to the earlier marks on a visual, aural and conceptual basis, as well as on the
basis of an overall impression. In addition, the opponent contended that the contested
mark is applied for in respect of goods which are identical and highly similar to those
of the earlier marks. As a result, the opponent argued that there exists a likelihood of
confusion on the part of the public, which includes a likelihood of association.
5. The opponent’s marks are earlier in accordance with section 6 of the Act,1 and each
mark completed its registration process more than five years before the date the
contested mark was filed.
6. On 25 January 2021, the applicant filed a counterstatement denying the grounds of
opposition in the following terms:
7. Within the counterstatement, the applicant also requested that the opponent provide
proof of use of its earlier marks. The effect of this is that the opponent may only rely
upon the earlier marks to the extent to which their use has been proven.
1 Although the UK has left the EU and the transition period has now expired, EUTMs, and International Marks
which have designated the EU for protection, are still relevant in these proceedings gi ven the impact of the
transitional provisions of the Trade Marks (Amendment et c.) (EU Exit) Regulations 2019. Tribunal Practice Notic e
2/2020 refers.

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT