Decision Nº O/179/20 from Intellectual Property Office - (Trade market), 19 March 2020
| Judge | Mrs B Hedley |
| Date | 19 March 2020 |
| Registration Number | UK00002481221, UK00003310118, UK00003310122 |
| Administrative Decision Number | O/179/20 |
| Court | Intellectual Property Office (United Kingdom) |
O-179-20
CONSOLIDATED PROCEEDINGS
IN THE MATTER OF
TRADE MARK APPLICATION NOS 3310118 & 3310122
IN THE NAME OF GULBAHAR UK LIMITED AND
OPPOSITIONS THERETO (UNDER NOS. 413902 & 413903) BY
TRADE WINDS CITRUS (INTL.) LTD
&
TRADE MARK REGISTRATION NO 2481221
IN THE NAME OF TRADE WINDS CITRUS (INTL.) LTD
AND THE
APPLICATION FOR CANCELLATION THEREOF ON GROUNDS OF NON-USE
(UNDER NO. 502301) BY GULBAHAR UK LIMITED
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BACKGROUND
1) This dispute concerns three consolidated cases; two oppositions and an
application for cancellation on the grounds of non-use. The parties to the dispute are
Trade Winds Citrus (Intl.) Ltd. (‘Party A’) and Gulbahar UK Limited (‘Party B’).
2) On 11 May 2018, Party B applied to register the mark TRÜ Blends, under
application number 3310118 (hereafter mark ‘118) and the mark TRÜ Flavors, under
application number 3310122 (hereafter mark ‘122), in respect of a wide variety of
goods and services in classes 29, 30, 31, 32, 33, 35 and 43.
3) Both applications were published in the Trade Marks Journal on 03 August 2018
for opposition purposes and subsequently opposed by Party A. It is claimed that both
applications offend under sections 5(2)(b) and 5(4)(a) of the Trade Marks Act 1994
(‘the Act’)1. Both oppositions are directed against all goods and services covered by
the applications except ‘Advertising; business management; business administration;
office functions’ in class 35 2. Under section 5(2)(b), Party A relies upon UK trade
mark registration no. 2481221, which was filed on 29 February 2008, registered on
21 November 2008 and covers goods in class 32. A statement of use was made in
respect of the goods relied upon. The representation of the earlier mark is shown
below:
4) Under section 5(4)(a), Party A relies upon use of two signs which are said to have
been used throughout the UK since 2009 in relation to ‘non-alcoholic drinks; fruit
drinks and fruit juices; chilled fruit juices’. The first sign is identical to the registered
1 Grounds under section 5(3) of the Act were withdrawn by Counsel at the hearing.
2 Opposition against those services was withdrawn by Counsel at the hearing.
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mark relied upon under section 5(2)(b); the second sign is the plain words TRU –
JUICE.
5) Subsequently, Party B filed an application to cancel Party A’s registration on the
grounds of non-use under sections 46(1)(a) and (b) of the Act. The section 46(1)(a)
claim is based upon the five-year period following registration i.e. 22 November 2008
to 21 November 2013, with a claimed date of revocation of 22 November 2013.
Under section 46(1)(b), the claim is based on the five-year period 10 May 2013 to 09
May 2018 with a claimed date of revocation of 10 May 2018.
6) Both parties filed a counterstatement in defence of their respective trade mark
applications/registration. In the cancellation, Party A claims that it has used its
registration in respect of ‘non-alcoholic drinks, in particular, fruit drinks and fruit
juices’ in class 32. The same goods are relied upon in the oppositions and Party B
has requested proof of use in relation to them.
7) Only Party A filed evidence. A hearing took place before me, at which both parties
were represented by Counsel; Party A by Mr Chris Aikens and Party B by Mr Jamie
Muir Wood.
PARTY A’S EVIDENCE
8) This takes the form of two witness statements. The first is from Mr Peter C.
McConnell; the second is from Mr Daniel James Cahill.
Mr McConnell’s evidence
9) Mr McConnell is a director of Party A. He explains that Party A’s flagship brand is
‘Tru-Juice’. He estimates that the revenue earned under the ‘Tru-Juice’ brand to be
JM$3.5 billion (approx. £21 million) and that ‘Tru-Juice’ commands a 60% market
share of the total juice market in Jamaica. The ‘Tru-Juice’ range is divided into three
lines, namely, ‘Premium Quality’, ‘No Sugar Added’ and ‘Exotics’. Under the
Premium Quality line, Party A sells the following flavours: Tropical Fruit Punch,
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