Decision Nº O/358/17 from Intellectual Property Office - (Trade market), 24 July 2017
| Judge | Mr Phillip Johnson |
| Registration Number | UK00003010419, UK00003010420, UK00003010427, UK00003019785, UK00003024670, UK00003028566, UK00003033805 |
| Administrative Decision Number | O/358/17 |
| Date | 24 July 2017 |
| Court | Intellectual Property Office (United Kingdom) |
O/358/17
IN THE MATTER OF THE TRADE MARKS ACT 1994
IN THE MATTER OF TRADE MARK APPLICATIONS NOS 3010419, 3010420 AND
3010427 ALL IN THE NAME OF MARIAGE FRÈRES SA
IN THE MATTER OF TRADE MARK APPLICATIONS NOS 3019785, 3028566 AND
3024670 ALL IN THE NAME TWG TEA COMPANY PTE LTD
AND IN THE MATTER OF THE APPLICATION FOR A DECLARATION OF INVALIDITY
BY TWG TEA COMPANY PTE LTD OF TRADE MARKS NO 3033805 IN THE NAME
MARIAGE FRÈRES SA
AND IN THE MATTER OF AN APPEAL FROM THE DECISIONS OF MARK BRYANT
DATED 20 DECEMBER 2016 (O/601/16; O/602/16; O/603/16 and O/604/16) AND DATED
21 DECEMBER 2016 (O/605/16)
DECISION
1. This is an appeal from five decisions of Mr Mark Bryant, for the Registrar, dated 20 and
21 December 2016. The parties to each of the five decisions are TWG Tea Company Pte
Ltd (“TWG”) and Mariage Frères SA (“MF”).
2. The first decision (O/601/16) relates to the word mark PARIS BREAKFAST TEA (No
3010420) and the third decision (O/603/16) relates to the word mark RUSSIAN
BREAKFAST TEA (No 3010427) both of which MF applied for on 18 June 2013 in
relation to the following goods in Class 30:
Class 30: Coffee, tea, cocoa; cocoa-, coffee-, chocolate-or tea-based beverages; non medicinal
infusions; sugar, rice, bread, pastry and confectionary, pancakes (foodstuffs); cookies; cakes;
rusks; confectionary; chocolate; edible ices; honey, salt, mustard; vinegar, sauces (condiments);
condiments; spices; dried plants and seeds, flavourings, other than essential oils, and mixtures of
the aforesaid goods, for preparing non-medicinal beverages.
3. TWG opposed both of the applications under sections 3(3)(b), 3(6) and 5(4)(a) of the
Trade Marks Act 1994. The oppositions were unsuccessful under section 5(4)(a), but
partially successful under sections 3(3)(b) and 3(6). TWG appeal ed the Hearing Officer’s
decision in relation to section 5(4)(a) and MF cross-appealed the decision in relation to
sections 3(3)(b) and 3(6).
4. The second decision (O/602/16) relates to the word mark LUCKY TEA (No 3010419),
which MF applied to register on 18 June 2013 in relation to the same goods in Class 30
and also the following goods in Class 21:
Class 21: Household or kitchen utensils and containers; teapots; tea services; tea balls, strainers,
tea measures, infusers, tea filters, tea cosys of metal; tableware of glass, porcelain, earthenware,
synthetic resin, terracotta; tableware of precious metal or coated therewith (except cutlery); tea
canisters, caddies and urns; candlesticks and candelabra (candlesticks) of precious metal or coated
therewith; trays and boxes for household use of precious metal or coated therewith.
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5. Further, TWG applied to register the following series of two marks (No 3019785) on 28
August 2013:
6. TWG’s application was in relation to goods in classes 21 and 30:
Class 21: Tea pots, tea cups and saucers, milk jugs, sugar bowls and basins, plates, containers for
foodstuffs; tea balls, tea caddies, tea canisters, tea infusers, tea strainers, bone china tableware
(other than cutlery), porcelain ware; earthenware; mugs; crockery; drinking glasses; and tumblers.
Class 30: Coffee, coffee-based beverages; tea, black tea [English tea], flavorings of tea, tea-based
beverages, fruit flavoured tea (other than medicinal), fruit tea (other than for medical purposes),
beverages with tea base, Rooibos tea, herbal tea (other than for medicinal use), Chai tea, green
tea, Japanese green tea, Oolong tea (Chinese tea), aromatic teas (other than for medicinal use),
beverages made of tea, iced tea, tea bags (other than for medicinal use), tea extracts, tea essence;
tea for infusions (other than for medicinal use), spices; sugar, chocolates, chocolate bars, pralines,
edible ices, ice cream, sorbets (ices), ice desserts, confectionery, cakes, pastry, macaroons
(pastry), pastries, biscuits, cookies, aromatic preparations for pastries; food dressings (sauces),
sauces (condiments); frozen yoghurt [confectionery ices], marzipan, quiches, puddings, bread,
bread rolls.
7. TWG opposed MF’s application under sections 3(3)(b), 3(6) and 5(4)(a) of the Trade
Marks Act 1994. MF opposed TWG’s subsequent application under sections 3(6), 5(1),
5(2) and 5(4)(a) of the Trade Marks Act 1994. TWG’s opposition was unsuccessful under
section 5(4)(a), but partially successful under sections 3(3)(b) and 3(6). TWG appealed
the Hearing Officer’s decision in relation to section 5(4)(a) and MF cross-appealed the
decision in relation to sections 3(3)(b) and 3(6). MF’s opposition under section 5(2) was
partially successful in relation to TWG’s application. The other grounds of opposition
were either not pursued or summarily dismissed by the Hearing Officer. MF cross-
appealed the Hearing Officer’s decision in relation to his finding under section 5(2).
8. The fourth decision (O/604/16) relates to TWG’s application (No 3028566) on 30
October 2013 to register the following marks in relation to the same goods in class 30 as
it did for its LUCKY TEA application:
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