Device Only (Trade Mark: Inter Partes) (O/286/04): IPO 21 Sep 2004

IPO Sections 1(1) and 3(1)(a): – Opposition failed.
Section 3(1)(b): – Opposition successful.
Section 3(1)(c): – Opposition failed.
Section 3(2)(c): – Not considered.
The opponent in this case is another chocolate manufacturer and trader in chocolate products. This case refers to the fact that another manufacturer Ludwig Schokolade of Germany manufactures a similar shaped product and has sold such goods into the UK market from 1990 onwards (see BL O/284/04). Thereafter the evidence is essentially that of Ludwig who say that they have supplied major UK stores such as Aldi, Asda and Iceland who sell the chocolate bars under various inhouse marks. Because their chocolate bars are essentially the same shape as the mark in suit the opponent claims that the mark applied for cannot be capable of distinguishing the applicant’s goods from those of other traders.
The mark in suit proceeded to advertisement on the basis of distinctiveness acquired through use. The BOUNTY bar has been produced since 1951 and there has been massive sales and promotion of this product since that date. It is in fact a market leader in relation to chocolate bars filled with coconut. The applicant also filed the results of two market surveys which showed that its chocolate bar is widely recognised by the general public as being a BOUNTY bar.
Under Sections 1(1) and 3(1)(a) the Hearing Officer decided that the mark in suit was in theory registrable if the applicant was able to educate the public to see the shape and decoration as a trade mark denoting only its goods or services. Opposition failed on this ground.
Under Section 3(1)(b) the Hearing Officer decided that the mark in suit was not acceptable in the prima facie and went on to consider the evidence filed in support of the application. As regards the sale of BOUNTY products and their promotion, the Hearing Officer noted that neither the packaging nor the promotional literature showed the mark in suit. Also the survey evidence was flawed to some extent in that not all the responses were recorded but were simply coded. In addition the public were shown a bar of BOUNTY chocolate (without the wrapper) and a photograph of the mark in suit and this is not how the goods are in fact selected. In reality the goods are sold in wrappers with the mark BOUNTY thereon and thus the average customer would not see the claimed mark at the time of purchase. There would certainly be no selection by shape. Overall the Hearing Officer considered that the applicant had failed to satisfy the proviso of Section 3(1) of the Act. Opposition successful on this ground.
As regards the ground under Section 3(1)(c) the Hearing Officer decided that the mark in suit was not a normal way of describing the types of goods or their characteristics, as included in the specification. Opposition on this ground thus failed.
In view of his decision under Section 3(1)(b) the Hearing Officer did not consider the ground under Section 3(2)(c).
Mr G Salthouse
O/286/04, Opp 90579, 2039840, [2004] UKIntelP o28604
PO, IPO, Bailii
Trade Marks Act 1994 1(1) 3(1)(a) 3(1)(b) 3(1)(c) 3(2)(c)

Updated: 01 April 2021; Ref: scu.456075