Decision Nº O/307/20 from Intellectual Property Office - (Trade market), 3 June 2020
| Judge | Mr M Williams |
| Administrative Decision Number | O/307/20 |
| Registration Number | UK00002366345, UK00002551634, UK00003249954 |
| Date | 03 June 2020 |
| Court | Intellectual Property Office (United Kingdom) |
O-307-20
IN THE CONSOLIDATED MATTERS OF
APPLICATION NO. 3249954
BY W A ESSEX LIMITED TO REGISTER AS A TRADE MARK (SERIES OF 3):
TACO RIA / Taco Ria / TACO-RIA
IN RESPECT OF SERVICES IN CLASS 43
AND
THE OPPOSITION THERETO UNDER NO. 410706
BY TAQUERIA WORLDWIDE LIMITED
AND
APPLICATIONS FOR INVALIDATION AND REVOCATION BY W A ESSEX LIMITED
(UNDER NOS. CA502573, CA502574, CA502575 AND CA502576)
AGAINST UK REGISTERED TRADE MARKS NO. 2366345 (“TAQUERIA)
AND NO. 2551634 ()
OWNED BY TAQUERIA WORLDWIDE LIMITED
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Background and pleadings
1. This decision deals with consolidated proceedings between the parties, where the applicant
has challenged, on absolute grounds, the standing of a registered trade mark relied on by
the opponent (and a stylised version of the same).
The Opposition
2. On 12 August 2017, W A Essex Limited (“the Applicant”) applied to register a series of
three word-only marks – “TACO RIA”, “Taco Ria” and “TACO-RIA” - for services in class
43, namely: restaurant services, restaurant services incorporating licensed bar facilities;
restaurants; restaurants (self-service-); take-out restaurant services (“the Application”).
3. The Application was published for opposition purposes on 8 September 2017, and on 6
November 2017, Taqueria Worldwide Limited (“the Opponent”) filed a notice of opposition,
relying on grounds under sections 5(2)(b) and 5(4)(a) of the Trade Marks Act 1994 (“the
Act”).
4. The section 5(2)(b) claim: The Opponent is the proprietor of UK trade mark No. 2366345
for the word “
T
aqueria”, registered for services in class 43, namely: provision of food and
drink; temporary accommodation, including restaurant, bar and catering services (“the
Earlier Mark”). The Earlier Mark was filed on 22 June 2004 (and registered on 26
November 2004) and is thus an earlier trade mark as defined in section 6(1) of the Act. The
Opponent’s stated objection under section 5(2)(b) is that the parties’ marks are visually
similar and phonetically and conceptually identical, that the parties’ services are identical,
and there is consequently a likelihood of confusion on the part of the public, which includes
a likelihood of association with the Earlier Mark.
5. The section 5(4)(a) claim: The Opponent claims use of the sign “TAQUERIA” throughout
the UK since March 2005 for “restaurant services, the provision of food and drink” and that
it has acquired goodwill and reputation in the market, such that use of the applied-for marks
would be a misrepresentation leading the public to believe that the services offered by the
Applicant are the services of the Opponent, or to mistakenly infer that the businesses are
connected or associated, and that the Opponent is likely to suffer damage as a result.
6. The Applicant’s notice of defence: The Applicant denied all aspects of the 5(4)(a) claim.
In response to the 5(2)(b) claim, the counterstatement admitted that the relevant services
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are identical, but denied that the marks are similar or that there is a likelihood of confusion.
The Earlier Mark had been registered for more than five years when the Application was
published for opposition and the Applicant put the Opponent to proof of use in respect of the
services relied on. The Applicant also referred in its counterstatement to its having filed
applications to invalidate and revoke the Earlier Mark (as follows).
Applications for invalidation and revocation
7. On 22 April 2019, the Applicant filed challenges not only to the standing of the Earlier Mark,
but additionally against a second registration owned by the Opponent (in this context “the
Proprietor”), namely, UK trade mark registration No. 2551634, which involves a stylised
version of the same word as follows: (“the Stylised Mark”).
The Stylised Mark was filed on 29 June 2010 and entered in the register on 1 October 2010
for ‘services for providing food and drink; restaurant services; catering services; bar
services; temporary accommodation; booking and reservation services for all the aforesaid
services’ in class 43.
8. The Applicant challenges both the Earlier Mark and the Stylised Mark, firstly by applications
for invalidity brought under section 47(1) of the Act, and secondly by way of applications
to revoke those registrations, relying on the provisions of section 46(1)(c) of the Act.
9. The applications for invalidity are based on claims that they were registered in breach of
sections 3(1)(b), (c) and (d) of the Act, as follows:
•
Under section 3(1)(b) the claim is that the mark is devoid of distinctive character because
it comprises nothing more than a wholly descriptive term, “taqueria”, which is a dictionary
word meaning ‘a Mexican restaurant specialising in tacos”, and that, as such, consumers
will be unlikely to perceive it as designating trade origin or distinguishing the services of
one undertaking from those of other undertakings.
•
Under section 3(1)(c) the claim is that the mark consists exclusively of a sign or indication
which may serve, in trade, to designate the kind, intended purpose or other characteristics
of the services for which it is registered.
•
Under section 3(1)(d) the claim is that the mark consists exclusively of a sign or indication
which has become customary in the current language or in the bona fide and established
practices of the trade. This allegation is again based on the dictionary definition of the
word “taqueria”, but also on the claim that “several third parties” in the UK had at the filing
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