Decision Nº O/690/18 from Intellectual Property Office - (Trade market), 31 October 2018
| Judge | Mrs L Stephens |
| Registration Number | UK00003252121 |
| Administrative Decision Number | O/690/18 |
| Date | 31 October 2018 |
| Court | Intellectual Property Office (United Kingdom) |
O-690-18
IN THE MATTER OF APPLICATION NO. 3252121
BY WCF LTD TO REGISTER:
AS A TRADE MARK IN CLASS 31
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 411000 BY INSPIRED PET NUTRITION LIMITED
1
Background & Pleadings
1. On 23 August 2017, WCF Ltd (“the applicant”) applied to register the above trade
mark for the following goods:
Class 31: Foodstuffs and beverages for animals; Beverages for dogs; Biscuits
for dogs; Biscuits for puppies; Bones for dogs; Canned foodstuffs for dogs;
Digestible chewing bones for dogs; Dog biscuits; Dog food; Dog treats [edible];
Edible bones and sticks for pets; Edible chewing products for domestic animals;
Edible chews for dogs; Edible dog treats; Edible pet treats; Food for dogs; Food
for racing dogs; Food preparations for dogs; Foods containing beef for feeding
dogs; Foods containing chicken for feeding dogs; Foods containing liver for
feeding dogs; Foods flavoured with beef for feeding dogs; Foods flavoured with
chicken for feeding dogs; Foods flavoured with liver for feeding dogs; Foods in
the form of rings for feeding to dogs; Foodstuff for dogs; Foodstuffs for dogs;
Foodstuffs for pet animals; Foodstuffs for puppies; Litter for dogs; Litter for
domestic animals; Pet animals; Pet food; Pet food for dogs; Pet treats in the
nature of bully sticks.
The application was published for opposition purposes on 8 September 2017.
2. On 8 December 2017, the application was opposed in full by Inspired Pet Nutrition
Limited (“the opponent”). The opposition is based upon section 5(2)(b) of the Trade
Marks Act 1994 (“the Act”), in relation to which the opponent relies upon the following
trade mark:
United Kingdom Trade Mark (“UKTM”) 1266150:
WAGG
Filing date: 30 April 1986
Registration date: 2 October 1989
The opponent indicates that it intends to rely upon all goods for which its mark is
registered, namely:
2
Foodstuffs for dogs and foodstuffs for domestic pets; all included in Class 31, but
not including fresh fruit or fresh vegetables or any goods of the same description
as fresh fruit or fresh vegetables.
3. The opponent argues that the applied for mark is highly similar to its UKTM and that
the competing goods are identical.
4. In its counterstatement, the applicant accepts that some of the competing goods
are identical, but denies that the trade marks are highly similar.
5. The applicant in these proceedings is represented by Ancient Hume Limited and
the opponent by Bailey Walsh & Co LLP. Both parties filed evidence during the
evidence rounds. Neither party requested a hearing; only the applicant filed written
submissions in lieu. This decision is taken following a careful reading of all the papers
which I will refer to, as necessary.
Decision
6. The opposition is based upon section 5(2)(b) of the Act which reads as follows:
“5 (2) A trade mark shall not be registered if because –
(b) it is similar to an earlier trade mark and is to be registered for goods or
services identical with or similar to those for which the earlier trade mark is
protected,
there exists a likelihood of confusion on the part of the public, which includes
the likelihood of association with the earlier trade mark.”
7. An earlier trade mark is defined in section 6 of the Act, which states:
“6. - (1) In this Act an “earlier trade mark” means –
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