Decision Nº O/066/21 from Intellectual Property Office - (Trade market), 29 January 2021
| Judge | Mr C Bowen |
| Administrative Decision Number | O/066/21 |
| Date | 29 January 2021 |
| Court | Intellectual Property Office (United Kingdom) |
| Registration Number | WO0000001459845 |
BL O-066-21
TRADE MARKS ACT 1994
IN THE MATTER OF AN INTERNATIONAL REGISTRATION DESIGNATING THE
UNITED KINGDOM NO. 1459845
BY GUANGDONG SAMADOYO INDUSTRIAL CO., LTD
TO REGISTER:
AS A TRADE MARK IN CLASS 21
AND
IN THE MATTER OF OPPOSITION THERETO UNDER NO. 416922
BY SAHM GMBH & CO KG
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BACKGROUND & PLEADINGS
1. On 15 November 2018 (claiming an International Convention priority date of 12
July 2018 from an earlier filing in China), Guangdong Samadoyo Industrial Co., Ltd
(“the applicant”) designated the United Kingdom seeking protection of the trade mark
shown on the cover page of this decision for the following goods in class 21:
Daily glassware [including cups, plates, pots, cylinders]; kitchen utensils;
drinking vessels; daily porcelain [including pots, bowls, plates, pots, jars,
cans]; daily pottery [including pots, bowls, plates, jars, jars, pots, casseroles,
pots, pottery utensils]; works of art of porcelain, ceramic, earthenware, terra-
cotta or glass; enamelled glass, not for building; bottles; cleaning instruments,
hand-operated; coffee percolators, non-electric.
The designation was published for opposition purposes on 12 April 2019.
2. On 10 July 2019, the designation was opposed in full by SAHM GmbH & Co KG
(“the opponent”), relying upon a single ground based upon section 5(2)(b) of the
Trade Marks Act 1994 (“the Act”). In its Notice of opposition, the opponent indicates
that it relies upon the goods and services (shown below) in International Registration
no. 545507 for the trade mark (shown below) which designated the United Kingdom
on 10 March 2006 and which was granted protection in the UK on 9 March 2007:
Class 21 - Utility and decorative objects made of earthenware, ceramic,
porcelain, glass and tin for household and industrial use (for gastronomy),
especially drinking vessels such as glasses, jugs, beer mugs, tankards,
tumblers, beakers, goblets, tulip-shaped beer glasses, boot-shaped beer
glasses, balloon-shaped glasses, small glasses.
Page 3 of 43
Class 40 - Services for perfecting glassware, porcelain and earthenware,
especially engraving, cutting, etching, printing, inscribing, painting.
3. The opponent indicates that in the five year period ending on the priority date of
the designation being opposed, its trade mark had been used in relation to the
following goods and services:
Class 21 - Utility and decorative objects made of glass for household and
industrial use (for gastronomy), especially drinking vessels such as glasses,
jugs, beer mugs, tankards, tumblers, beakers, goblets, tulip-shaped beer
glasses, boot-shaped beer glasses, balloon-shaped glasses, small glasses.
Class 40 - Services for perfecting glassware.
4. The applicant filed a counterstatement in which the basis of the opposition is
denied. Inter alia, in its counterstatement, the applicant states:
“1. The applicant GUANGDONG SHANGMING INDUSTRIAL CO., LTD.
Founded in 2009, a company located in Guangzhou, China. As an integrated
company, its business involves wholesale and retail of ceramics and
glassware, it is a high-end glassware manufacturer. The applicant combines
traditional Chinese craftsmanship with contemporary design. Its business
cover throughout Asia, including China, Korea and Malaysia.
2. The applicant's mark was created by the applicant on his own, name after
the applicant's Chinese name. The applicant's name contains "SHANGMING",
while it would be too long as a trademark for customers to remember, so the
applicant transliterated it into "SAMA", which would be easier to remember
both for home and abroad customers.
3. The applicant has built up a reputation in respect of goods in class 21 for
years of honest use in China and other countries, local customers are
impressed by the applicant as well as applicant' s mark. The mark "SAMA" is
therefore unique and meaningful for the applicant.”
5. In these proceedings, the opponent is represented by Marks & Clerk LLP and the
applicant by Bayer & Norton Business Consultants Ltd. Only the opponent filed
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