Device Only (Trade Mark: Inter Partes) (O/288/04): IPO 21 Sep 2004

IPO Sections 1(1) and 3(1)(2) – Opposition failed.
Section 3(1)(b) – Opposition successful.
Section 3(1)(c) – Opposition failed.
Section 1(1)(d) – Opposition failed.
Section 3(2)(c) – Not considered
Section 32(2)(d) – Opposition successful.
The opponent in this case is a major retailer of food products including confectionery. It files evidences from a German chocolate manufacturer Ludwig Schokolade who have produced a similar shaped chocolate product for sale in the UK from 1990 onwards. Ludwig says that they have supplied major UK stores such as Aldi, Asda and Iceland who sell the chocolate bars under various inhouse marks. Because the chocolate bars are essentially the same shape as the mark in suit it is claimed that the mark applied for cannot be capable of distinguishing the applicant’s goods from those of other traders.
Another declaration from Nestle Rowntree states that there has always been confectionery with rounded ends and of a lozenge shape on the market. Also the wave or ripple decoration on the mark is not original. As regards the sale of such products, they are generally packaged and the public do not buy them on the basis of shape. They rely on the packaging get-up and brand names to identify the product wanted.
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 Section 32(2)(b) the opponent claimed that even though the applicant claimed a three dimensional mark the mark as depicted did not display all sides of the chocolate bar; also the description referred to ‘the shape of part of a confectionery bar’ and not part of a chocolate bar displayed as the mark. As regards the first point the Hearing Officer stated that the applicant would only have rights in the mark as displayed. He accepted that there was merit in the second claim and upheld the objection. This objection could, however, be overcome if the applicant amended the description of the mark from ‘part of a confectionery bar’ to include a reference to part of a chocolate bar depicted as the mark.
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 material showed the mark in suit. As regards the survey evidence one of the surveys had to be disregarded since those surveyed were shown a whole bar of BOUNTY chocolate and not a part of a bar as depicted in this application. As regards the second survey the Hearing officer considered it had some defects in that not all the responses were recorded, though they were coded to specific headings. Also they were shown photographs of various chocolate products, including the mark in suit but this is not in fact how the goods are selected by consumers. In reality the goods are sold in wrappers with the mark BOUNTY thereon and thus the normal customers would not in fact 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 this mark in suit was not a normal way of describing the types of goods or their characteristics, as included in the specification. Opposition failed on this ground.
Under Section 3(1)(d) the Hearing Officer noted that the ‘Ludwig’ bar had only been sold in the UK from 1990. As their bar has the same rounded ends and wave pattern of the applicant’s it claimed that the design is customary for such chocolate bars. The Hearing Officer did not accept this claim. If a company has a monopoly position in a market and a competitor enters the marketplace and copies the design of the product this does not make the design customary. Opposition failed on this ground.
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/288/04, Opp 90809, 2044267, [2004] UKIntelP o28804
PO, IPO, Bailii
Trade Marks Act 1994 1(1) 3(1)(a) 3(1)(b) 3(1)(c) 3(2)(c) 32

Updated: 01 April 2021; Ref: scu.456077