JAN III SOBIESKI - 217829

• Administrative Decision Number: 217829
• Date: 03 November 2005
• opponent: BRITISH AMERICAN TOBACCO (BRANDS) LIMITED
• Section: Trade Marks Act, 1996 - 2003-2007

1

TRADE MARKS ACT, 1996

Decision in Hearing

IN THE MATTER OF an application for registration of Trade Mark No. 217829 and

in the matter of an Opposition thereto.

BELVEDERE Applicant

BRITISH AMERICAN TOBACCO (BRANDS) LIMITED Opponent

The application

1. On 8 May, 2000, Belvedere, a société anonyme organised and existing under the

laws of France, of 10 Avenue Charles Jaffelin, 21200 BEAUNE, France, made

application (No. 2000/01637) to register the words JAN III SOBIESKI as a Trade

Mark in Class 33 in respect of vodka. The application claimed priority of an

application for registration filed in France on 25 November, 1999.

2. The application was accepted for registration and advertised accordingly under

No. 217829 in Journal No. 1913 on 4 April, 2001.

3. Notice of Opposition to the registration of the mark pursuant to Section 43 of the

Act was filed on 3 July, 2001 by British American Tobacco (Brands) Limited of

Globe House, 4 Temple Place, London WC2R 2PG, United Kingdom. The

Applicant filed a counter-statement on 11 October, 2001 and evidence was, in due

course, filed by the parties under Rules 20 and 21 of the Trade Marks Rules, 1996.

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

Controller, on 21 September, 2005. The parties were notified on 11 October, 2005

that I had decided to uphold the opposition and to refuse registration of the mark.

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

2

Notice of Opposition

5. In its Notice of Opposition the Opponent enumerates a number of facts and

grounds of opposition, which may be summarised as follows:

(i) The Opponent is the proprietor of Trade Mark Registrations Nos. 215832,

Jan III Sobieski label (see Appendix 1) and 216014, JAN III SOBIESKI,

both of which are registered as of 9 December, 1999 in respect of goods in

Class 34, namely, cigarettes, tobacco, tobacco products, smokers’ articles,

lighters and matches. The Opponent has used those marks in relation to

those goods and has a substantial reputation in Ireland under the marks,

which are entitled to protection under the Paris Convention as well-known

trade marks.

(ii) The use of the Applicant’s trade mark is prohibited in the State by law and

registration would therefore offend against Section 8(4)(a) of the Act.

(iii) The application for registration was made in bad faith by the Applicant and

registration should be refused under Section 8(4)(b) of the Act

(iv) The mark propounded for registration is identical to the Opponent’s

registered trade marks and is to be registered for goods that are similar to

those in respect of which the Opponent’s marks are protected, such that

there exists a likelihood of confusion on the part of the public and

registration would therefore offend against the provisions of Section

10(2)(a) of the Act.

(v) The mark is similar to the Opponent’s registered trade marks and is to be

registered for goods that are identical with or similar to those in respect of

which the Opponent’s marks are protected, such that there exists a

likelihood of confusion on the part of the public and registration would

therefore offend against the provisions of Section 10(2)(b) of the Act

(vi) The use of the mark would take unfair advantage of, or be detrimental to,

the reputation or distinctive character of the Opponent’s marks and

registration should be refused under Section 10(3) of the Act.

(vii) The use of the mark in the State is liable to be prevented by virtue of any

rule of law protecting an unregistered trade mark or other sign used in the

course of trade and registration should therefore be refused under Section

10(4)(a) of the Act.