Decision Nº O/774/21 from Intellectual Property Office - (Trade market), 15 October 2021
| Judge | Ms Leisa Davies |
| Date | 15 October 2021 |
| Administrative Decision Number | O/774/21 |
| Court | Intellectual Property Office (United Kingdom) |
| Registration Number | UK00003489170 |
O/774/21
TRADE MARKS ACT 1994
IN THE MATTER OF TRADE MARK APPLICATION NUMBER 3489170
BY
GRAPE PASSIONS LTD
TO REGISTER THE FOLLOWING TRADE MARK IN CLASS 33
COLO GATO
AND OPPOSITION THERETO UNDER NUMBER 421631
BY
VINA SAN PEDRO TARAPACA S.A.
1
Background and Pleadings
1. On 12 May 2020, Grape Passions Ltd (“the Applicant”) applied to register in the UK
the trade mark COLO GATO numbered 3489170 for goods in class 33 namely
alcoholic beverages (except beers), wines, red wines, white wines, sparkling wines,
fortified wines, spirits and liqueurs. It was accepted and published on 3 July 2020.
2. Vina San Pedro Tarapaca S.A. (“the Opponent”) opposes the application1 under
section 5(2)(b) of the Trade Marks Act 1994 (“the Act”) relying on two of its European
Union trade marks (“EUTMs”) as set out below.
i. EUTM 14424246 (“the first earlier mark”)
GATO NEGRO ADORED EVERYWHERE
Filed 29 July 2015 and registered 11 November 2015 for wine in class
33.
ii. EUTM 18211763 (“the second earlier mark”)
Filed 18 March 2020 and registered 1 July 2020 for wine in class 33.
3. The Opponent contends that there is a likelihood of confusion between the
respective marks including a likelihood of association as a result of the Applicant’s
mark covering identical goods and the visual and phonetical similarity between the
marks. It contends that the marks share the element GATO which is the prefix in the
Opponent’s marks and has an independent and distinctive role in each of the
respective marks. In addition, it claims that “the Opponent is the proprietor of a family
1 By way of application dated 30 September 2020
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