Decision Nº O/296/20 from Intellectual Property Office - (Trade market), 29 May 2020
| Judge | Mrs J Pike |
| Registration Number | UK00003262973 |
| Date | 29 May 2020 |
| Administrative Decision Number | O/296/20 |
| Court | Intellectual Property Office (United Kingdom) |
O/296/20
IN THE MATTER OF THE APPLICATION FOR TRADE MARK NO. 3262973
IN THE NAME OF SOHO FLORDIS UK LIMITED FOR THE TRADE MARK
IN CLASSES 3, 5, 29, 30 AND 32
AND
THE OPPOSITION THERETO UNDER NUMBER 412928
BY
ERNEST JACKSON & CO. LIMITED
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Background
1. On 12 October 2017, Soho Flordis UK Limited (“the applicant”) applied for the trade
mark shown on the cover page of this decision, number 3262973, for goods and
services in classes 3, 5, 29, 30 and 32. The application was published for opposition
purposes in the Trade Marks Journal, on 30 March 2018.
2. Ernest Jackson & Co. Limited (“the opponent”) partially opposes the application in
classes 5, 30 and 32 under sections 5(2)(b) and 5(4)(a) of the Trade Marks Act 1994
(“the Act”).1 For its section 5(2)(b) ground, the opponent relies on three earlier
registrations, all in class 5:
(i) 532822
POTTER’S
Medicated preparations in the form of pastilles all for human use in the treatment of
catarrh.
Filing date: 22 June 1932; date registration procedure completed: 9 February 1933.
(ii) 645168
POTTER’S.
Pharmaceutical preparations and substances, medicated and tonic foods for infants
and invalids, antiseptics.
Filing date: 22 February 1946; date registration procedure completed: 30 April 1947.
1 The section 5(3) ground was withdrawn at a case management conference held on 12 September
2019.
Page 3 of 47
(iii) 3017684
Medicated confectionery, preparations and substance for medical or therapeutic use,
pastilles, lozenges.
Filing date: 10 August 2013; date registration procedure completed: 15 November
2013.
3. The opponent made a statement of use in respect of all three earlier marks.
However, only 532822 and 645168 had been registered for five years or more on the
date on which the contested application was published. 3017684 is not subject to
proof of use under Section 6A of the Act. Therefore, despite the applicant requesting
proof of use in relation to all three marks, proof of use is only applicable to 532822 and
645168. This was accepted at a case management conference (“CMC”) held on 12
September 2019, and again at the hearing of the substantive grounds.
4. The opponent relies upon its use of the sign POTTER’S under section 5(4)(a), since
at least 1932, in relation to ‘medicated confectionery; pastilles and lozenges; cough
pastilles’. It claims its goodwill entitles it to prevent the use of the applicant’s mark
under the law of passing off.
5. The applicant filed a notice of defence and counterstatement, denying the grounds.
In its counterstatement, the applicant states:
“19. The Applicant denies that its Mark is confusingly similar to the Opponent’s
Marks. The Applicant [sic] has failed to put forward any instances of confusion.
Furthermore, the parties and their marks have co-existed in the market place
for different goods over the past several decades without any confusion, and in
fact with full knowledge and agreement between the parties….
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