Decision Nº O/086/22 from Intellectual Property Office - (Trade market), 2 February 2022
| Judge | Ms S Wilson |
| Administrative Decision Number | O/086/22 |
| Date | 02 February 2022 |
| Court | Intellectual Property Office (United Kingdom) |
| Registration Number | WO0000001533052 |
O/086/22
TRADE MARKS ACT 1994
IN THE MATTER OF INTERNATIONAL REGISTRATION NO. WO0000001533052
BY SOCIETE FRANCAISE DES HOTELS DE MONTAGNE
TO REGISTER THE TRADE MARK:
BARON EDMOND DE ROTHSCHILD
IN CLASS 33
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 422266 BY
BARON PHILIPPE DE ROTHSCHILD S.A.
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BACKGROUND AND PLEADINGS
1. International trade mark 1533052 (“the IR”) consists of the sign shown on the cover
page of this decision. The holder is Societe Francaise Des Hotels De Montagne. The
IR is registered with effect from 17 March 2020. With effect from the same date, the
holder designated the UK as a territory in which it seeks to protect the IR under the
terms of the Protocol to the Madrid Agreement. The holder claims a priority date of 25
September 2019 and seeks protection for the following goods:
Class 33 Alcoholic beverages (except beers); wines.
2. The request to protect the IR was published on 28 August 2020. On 30 November
2020, Baron Philippe De Rothschild S.A. (“the opponent”) opposed the protection of
the IR in the UK based upon sections 5(2)(b) and 5(3) of the Trade Marks Act 1994
(“the Act”). The opponent relies upon the following trade marks:
BARON PHILIPPE DE ROTHSCHILD
EUTM no. 6832271
Filing date 12 November 1997; registration date 28 January 1999
Relying upon all goods for which the mark is registered, namely:
Class 33 Alcoholic beverages (except beers); wines.
(“the First Earlier Mark”)
BARON PHILIPPE DE ROTHSCHILD
UKTM no. 1120081
Filing date 4 September 1979; registration date 4 September 1979
Relying upon all goods for which the mark is registered, namely:
Class 33 Wines.
(“the Second Earlier Mark”)
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 given the impact of the
transitional provisions of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 – please see Tribunal
Practice Notice 2/2020 for further information.
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3. Under section 5(2)(b), the opponent claims that there is a likelihood of confusion
because the marks are similar, and the goods are identical or similar.
4. Under section 5(3), the opponent claims to have a reputation for all of the goods for
which the marks are registered. The opponent claims that use of the holder’s mark
would, without due cause, take unfair advantage of, or be detrimental to, the distinctive
character and/or reputation of the earlier marks.
5. The holder filed a counterstatement denying the claims made and putting the
opponent to proof of use of the earlier marks.
6. The holder is represented by Baron Warren Redfern and the opponent is
represented by Novagraaf UK. Both parties filed evidence in chief and the opponent
filed evidence in reply. Neither party requested a hearing, but both filed written
submissions in lieu. This decision is taken following a careful perusal of the papers.
EVIDENCE AND SUBMISSIONS
7. The opponent filed evidence in chief in the form of the witness statement of Eric
Bergman dated 28 April 2021, accompanied by 10 exhibits. Mr Bergman is the Deputy
Managing Director for the opponent.
8. The opponent’s evidence was accompanied by written submissions dated 4 May
2021.
9. The holder filed evidence in the form of the witness statements of:
a. Alexis De La Palme dated 23 July 2021 (accompanied by 9 exhibits). Mr De La
Palme is the Chairman of the Executive Board of the holder, a position he has
held for six years.
b. Jean French Dusch dated 29 July 2021 (accompanied by 4 exhibits). Mr Dusch
is the Chief Executive Operator of Edmond de Rothschild (UK) Limited, which
is part of the same group of companies as the holder.
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