Decision Nº O/0875/23 from Intellectual Property Office - (Trade market), 15 September 2023
| Court | Intellectual Property Office (United Kingdom) |
| Judge | Ms S Wilson |
| Date | 15 September 2023 |
| Administrative Decision Number | O/0875/23 |
| Registration Number | UK00003704815 |
O/0875/23
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION NO. UK00003704815
IN THE NAME OF UNICORN STUDIO INC.
FOR THE FOLLOWING TRADE MARK:
IN CLASSES 14, 19, 20, 21 AND 35
AND IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 432262
BY VERONESE (SOCIÉTÉ PAR ACTIONS SIMPLIFIÉE)
BACKGROUND AND PLEADINGS
1. On 30 September 2021, UNICORN STUDIO INC. (“the applicant”) applied for the
trade mark shown on the cover page of this decision in the UK. The application was
made pursuant to Article 59 of the Withdrawal Agreement between the United
Kingdom and the European Union. Under the terms of that agreement, the applicant
is entitled to rely upon the earlier EU filing date i.e. 5 September 2017. The application
was published for opposition purposes on 28 January 2022 and registration is sought
for the goods and services shown in paragraph 32 below.
2. On 28 March 2022, VERONESE (Société par Actions Simplifiée) (“the opponent”)
opposed the application based upon section 5(2)(b) of the Trade Marks Act 1994 (“the
Act”). The opponent relies upon UKTM no. 908549875 for the mark VERONESE,
which was filed on 15 September 2009 and registered on 8 March 2010.1 The
opponent relies upon all goods for which the earlier mark is registered, as set out in
the Annex to this decision.
3. The opponent claims that the marks are similar, and the goods and services are
identical or similar, with the result that there is a likelihood of confusion.
4. The applicant filed a counterstatement denying the claims made and putting the
opponent to proof of use.
5. The applicant is represented by Pinsent Masons LLP and the opponent is
represented by Stevens, Hewlett & Perkins.
6. Both parties filed evidence in chief. The opponent also 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.
1 On 1 January 2021, the UK left the EU after the expiry of the transition period. Under Article 54 of the
Withdrawal Agreement, the Registry created compara ble UK trade marks for all rights holders with an existing
EUTM. As a result of the opponent having an EUTM being protected as at the end of the Implementation Period,
a comparable UK trade mark was automatically created. The comparable trade mark shown here is now
recorded on the UK trade ma rk register, has the sa me legal status as if it h ad been applied for and regis tered
under UK law, and retains its original filing date.
2
EVIDENCE AND SUBMISSIONS
7. The opponent filed evidence in chief in the form of the witness statement of Shaun
Nicholas Sherlock dated 14 October 2022, which is accompanied by 6 exhibits (SNS1
to SNS6). Mr Sherlock is a Chartered Trade Mark Attorney acting on behalf of the
opponent.
8. The applicant filed evidence in the form of the witness statement of Matthew Harris
dated 13 January 2023, which is accompanied by 7 exhibits (MH1 to MH7). Mr Harris
is the Chartered Trade Mark Attorney acting on behalf of the applicant.
9. The opponent filed evidence in reply in the form of the following witness statements:
a) Keith Ohm dated 22 March 2023, which is accompanied by 1 exhibit. Mr Ohm
is a translator. He has provided a translated version of exhibit SNS4.
b) Shaun Nicholas Sherlock dated 27 March 2023, which is accompanied by 4
exhibits (SNS7 to SNS10).
10. The applicant filed written submissions in lieu dated 31 May 2023.
11. The opponent filed written submissions in lieu dated 1 June 2023.
RELEVANCE OF EU LAW
12. Although the UK has left the EU, section 6(3)(a) of the European Union
(Withdrawal) Act 2018 requires tribunals to apply EU-derived national law in
accordance with EU law as it stood at the end of the transition period. The provisions
of the Act relied upon in these proceedings are derived from an EU Directive. This is
why this decision continues to make reference to the trade mark case-law of EU courts.
3
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