Decision Nº O/607/22 from Intellectual Property Office - (Trade market), 18 July 2022
| Judge | Mr O Morris |
| Date | 18 July 2022 |
| Registration Number | UK00003549437 |
| Court | Intellectual Property Office (United Kingdom) |
| Administrative Decision Number | O/607/22 |
O-607-22
IN THE MATTER OF:
APPLICATION No. 3549437
BY GUY UNWIN
TO REGISTER A SERIES OF TWO MARKS:
DUNKA
&
dunka
AS TRADE MARKS IN CLASS 30
AND
OPPOSITION THERETO (UNDER No 424343) BY
KRAFT FOODS UK INTELLECTUAL PROPERTY LIMITED
Page 2 of 31
Background and pleadings
1. The issue in these proceedings is whether there is conflict between the following
marks:
Applied for series
Opponent’s mark (registration no. 2138995)
DUNKA & dunka1
Filed on 28 October 2020
Published for opposition
purposes on 30 April 2021
DUNKERS
Filed on 14 July 1997
Registered on 3 April 1998
Class 30: Baked goods,
confectionery, chocolate and
desserts; Bread; Pastries,
cakes, tarts and biscuits
(cookies).
Class 29: Cheese and cheese products, none of
which are frozen.
Class 30:
Snacks and snack products, none of
which are frozen
2. The opponent, Kraft Foods UK Intellectual Property Limited, claims that conflict
arises under:
• Section 5(2)(b) of the Trade Marks Act 1994 (“the Act”), a claim which relates
to the existence of a likelihood of confusion.
• Section 5(3) of the Act, on the basis that its mark has a reputation and that the
use of the applied for mark would give rise to an unfair advantage, dilution
and/or tarnishment.
• Section 5(4) of the Act, on the basis that the use of the applied for mark is liable
to be prevented under the law of passing-off. The opponent relies on the use,
throughout the UK, of a sign corresponding to its registered mark in relation to
the same goods as per that registration, with such use claimed to have
commenced since at least as early as 1998.
1 Both marks in the series are word marks which, notionally speaking, could be used in upper and lower
case. Therefore, there is no real difference between the marks in the series. As such, I will refer to the
applied for marks in the singular, referencing the DUNKA mark.
Get this document and AI-powered insights with a free trial of vLex and Vincent AI
Get Started for FreeStart Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
Start Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
Start Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
Start Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
Start Your Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting