LITTLE CAESARS - 151027

• Administrative Decision Number: 151027
• opponent: LITTLE CAESAR PIZZA LIMITED

1

TRADE MARKS ACT, 1963

Decision in Hearing at the Patents Office

IN THE MATTER OF an application for registration of Trade Mark No. 151027 and

in the matter of an Opposition thereto.

LITTLE CAESAR ENTERPRISES, INC. Applicants

LITTLE CAESAR PIZZA LIMITED Opponents

1. Little Caesar Enterprises, Inc., a corporation organised and existing under the laws

of the State of Michigan, United States of America, of 9088 Telegraph Road,

Detroit, Michigan, made application (N0. 92/6595) on 22 December, 1992 under

the Trade Marks Act, 1963 to register the words LITTLE CAESARS as a Trade

Mark in Part A of the Register in Class 30 in respect of the following goods:

“Tea, coffee, cocoa, drinking chocolate; mixtures of coffee and chicory, coffee

essences and coffee extracts; chicory and chicory mixtures; all for use as coffee;

bread, bakery products, pastry and pastry products and salt all for food; cakes,

biscuits (other than biscuits for animals), flour, pasta, cereals and cereal

preparations, all for food for human consumption; rice, non-medicated

confectionery, sugar, spices (other than poultry spice), sauces, pies, tarts, flans,

waffles, pizzas; ices and ice creams; doughnuts; prepared meals and snack foods, all

included in Class 30.”

2. The Application was accepted for registration in Part A of the Register and was

advertised under No. 151027 in Journal No. 1734 on 18 May, 1994.

3. Notice of Opposition pursuant to Section 26 of the Act was filed on 9 December,

1994, by Little Caesar Pizza Limited, an Irish company of Cecilia House, Cecilia

Street, Dublin 2. The Applicant filed a counter-statement on 16 March, 1995, and

evidence was, in due course, filed by the parties under Rules 37, 38 and 39 of the

Trade Mark Rules, 1963.

2

4. The Opposition became the subject of a Hearing before me, acting for the

Controller, on 20 December, 1999. The parties were notified on 20 January, 2000 that

I had decided to dismiss the Opposition and to allow the mark proceed to registration.

I now state the grounds of my decision and the materials used in arriving thereat.

5. In their Notice of Opposition, the Opponents stated as follows:

(i) We have for a number of years and earlier than December, 22, 1992, traded

under the Mark LITTLE CAESARS in relation to the operation of a restaurant

and the sale of a wide range of prepared meals, foodstuffs and drinks.

(ii) We are the proprietors of the Trade Mark LITTLE CAESARS which is the

subject of a pending Application No. 2088/94 in Class 42 in respect of

“restaurants, self-service restaurants; cafeterias”.

(iii) Our Trade Mark LITTLE CAESARS denotes, and has long denoted both to

the trade and the public our goods and services and further serves to

distinguish our goods and services from those of other traders.

(iv) The proposed use by the Applicant of the Trade Mark for which registration is

sought is calculated to deceive or cause confusion and is otherwise disentitled

to protection in a court of law and in accordance with the provisions of Section

19 of the Trade Marks Act, 1963, should be refused registration.

(v) The said Trade Mark which the Applicant has applied to register is calculated

to deceive and to lead to the Applicant’s goods being passed off or mistaken

for goods sold or services provided by us in the course of our trade.

(vi) Because the Applicant’s Trade Mark is identical with our Trade Mark LITTLE

CAESARS and the respective goods are the same, there exists a likelihood of

confusion on the part of the public which includes the likelihood of association

with our Trade Mark.