Decision Nº O/315/20 from Intellectual Property Office - (Trade market), 9 June 2020
| Judge | Mr G Salthouse |
| Date | 09 June 2020 |
| Registration Number | UK00003316219 |
| Administrative Decision Number | O/315/20 |
| Court | Intellectual Property Office (United Kingdom) |
O-315-20
IN THE MATTER OF REGISTRATION No. 3316219
STANDING IN THE NAME OF
BELFAST GIN DISTILLERY LIMITED
AND
IN THE MATTER OF REQUESTS FOR A DECLARATION
OF INVALIDITY THERETO UNDER No.502606
BY DANNY BOY LABEL LLP
2
BACKGROUND
1) The following trade mark is registered in the name of Belfast Gin Distillery Limited
(hereinafter BGD):
Mark
Number
Filing &
registration date
Class
Specification
Titanic Gin
UK
3316219
07.06.18
31.08.18
33
Spirits and liquors.
40
Spirits distillery services
2) By an application dated 15 May 2019 Danny Boy Label LLP (hereinafter DBL) applied for
a declaration of invalidity in respect of this registration. DBL is the proprietor of the following
trade mark:
Mark
Number
Filing &
registration date
Class
Specification RELIED UPON
TITANIC
EU
854745
18.06.98
08.10.99
33
Alcoholic beverages (except
beers).
3) The grounds of invalidity are, in summary:
a) that there is a high degree of visual and phonetic similarity between the mark applied
for and the earlier mark of DBL, and they are conceptually similar both evoking
imagery of the famous ship. The goods are identical and similar to the services and
there is a likelihood of confusion. The mark in suit therefore offends against section
5(2)(b) of the Trade Marks Act 1994.
b) DBL have used the sign TITANIC on whisky throughout the UK since 2008 and has
acquired a significant goodwill and reputation. Use of the mark in suit upon the goods
and services sought to be registered would damage the business of DBL and also its
reputation. The mark in suit therefore offends against section 5(4)(a) of the Act.
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