Decision Nº O/652/20 from Intellectual Property Office - (Trade market), 23 December 2020

JudgeMr James Hopkins
Date23 December 2020
Administrative Decision NumberO/652/20
CourtIntellectual Property Office (United Kingdom)
Registration NumberUK00003416642
O/652/20
TRADE MARKS ACT 1994
IN THE MATTER OF
TRADE MARK APPLICATION NO. 3416642
BY PLENTIFUL SOLUTIONS LIMITED
TO REGISTER AS A TRADE MARK:
BeeBae
IN CLASSES 16, 21 & 24
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 418258
BY BEEBEE WRAPS LIMITED
Page 2 of 42
BACKGROUND AND PLEADINGS
1. On 25 July 2019, PLENTIFUL SOLUTIONS LIMITED (“the applicant”) applied to
register the trade mark BeeBae, under number 3416642 (“the application”). It was
accepted and published in the Trade Marks Journal on 2 August 2019 in respect of
the following goods:
Class 16: Food wrappers; Food wrapping plastic film; Food wrapping plastic
film for household use; Films for wrapping foodstuffs.
Class 21: Food storage containers.
Class 24: Cotton cloths; Cotton fabric; Cotton fabrics; Textiles made of cotton;
Textiles for food wrapping.
2. On 29 October 2019, BeeBee Wraps Limited (“the opponent”) filed a notice of
opposition. The opposition is brought under sections 5(2)(b) and 5(4)(a) of the Trade
Marks Act 1994 (“the Act”) and is directed against all the goods of the application.
3. In relation to its section 5(2)(b) claim, the opponent relies upon its United Kingdom
trade mark number 3240341 (“the earlier mark”), which consists of the following:
4. The earlier mark was filed on 28 June 2017 and was entered into the register on 22
September 2017 for ‘beeswax food wraps’ in class 24.
Page 3 of 42
5. The opponent contends that the competing trade marks are similar and the
respective goods are identical or similar, giving rise to a likelihood of confusion,
including a likelihood of association.
6. Given the respective filing dates, the opponent’s mark is an earlier mark, in
accordance with Section 6 of the Act. However, as it had not been registered for five
years or more at the filing date of the application, it is not subject to the proof of use
requirements specified in Section 6A of the Act. Consequently, the opponent is entitled
to rely upon its goods without having to establish genuine use.
7. Turning to the section 5(4)(a) claim, the opponent relies upon its alleged
unregistered rights in the signs BEEBEE WRAPS and BEEBEE. It claims that the
signs have been used throughout the UK since April 2017 and January 2018,
respectively. Both signs, according to the opponent, have been used in relation to
‘beeswax wraps, food wrappers, textiles for food wrapping’ and ‘retail services in
relation to beeswax wraps, food wrappers, textiles for food wrapping’. The opponent
claims to have acquired goodwill under the signs and contends that use of the
contested mark would, therefore, be a misrepresentation to the public. The opponent
argues that this would result in damage to the aforementioned goodwill.
8. The applicant filed a counterstatement denying the grounds of opposition. The
applicant argues that the competing marks are different in appearance and
composition. Moreover, the applicant submits that it is common for undertakings that
sell beeswax food wraps to use marks containing the word ‘bee’ or figurative
representations thereof. Based on these factors, the applicant denies that there is a
likelihood of confusion and asserts that there are no “deceptive similarities” between
the competing marks.
9. The opponent has been professionally represented throughout these proceedings
by Ward Trade Marks Limited, whereas the applicant is unrepresented. Only the
opponent filed evidence, which will be summarised to the extent that is considered
necessary. Both parties were given the option of an oral hearing but neither requested
to be heard on this matter and neither elected to file written submissions in lieu of a

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