Ferrero SpA v Fiesta S.A

[2001] ATMO 41

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Ferrero SpA to an application to remove trade mark registration numbers 205368(30) and 311634(30) - FIESTA - under section 92 of the 1995 Act by Fiesta S.A..

BACKGROUND

Trade marks 205368 and 311634 both consist of the word trade mark FIESTA and are registered in the name of Ferrero SpA. Both marks are registered in respect of class 30 goods. 205368 is registered in respect of:

Chocolate; confectionery; ice cream; flavoured ices; cocoa; biscuits,

311634 is registered for goods specified as:

All goods in this class including cakes, sponge cakes (filled, glazed and decorated), snack cakes (chocolate covered); but excluding chocolate, confectionery, ice-creams, flavoured ices,  cocoa; biscuits, spices and seasonings.

An application under s92(4)(b) of the Trade Marks Act1995 for the removal of these two marks from the Register was filed by Fiesta S.A. on 12 May 2000. Accordingly the relevant three year period for alleged non-use under s92(4)(b) commences on 12 April 1997 and ceases on 12 April 2000.

In accordance with the requirements of regulation 9.1, the application filed by Fiesta S.A. was in the approved form. It was accompanied by a declaration made on behalf of Fiesta S.A., which states that an inquiry into the use of the trade mark was undertaken and it sets out findings which support the application in terms of subsection 92(4) of the Act. The removal application was advertised, and, within the time allowed per the provisions of regulation 9.3, Ferrero SpA filed its notice of opposition to the removal application and served a copy on Fiesta S.A.. In accordance with regulation 9.4, regulations 5.7 to 5.17 then came into operation, and the opponent, Ferrero SpA, had three months in which to serve and file evidence to support its opposition.

Ferrero SpA filed no evidence and did not serve a notice stating that it did not intend to rely on evidence in support. Nor did it seek an extension of time in which to file evidence. Further, Ferrero SpA did not request a hearing.

In these circumstances, the provisions of regulations 9.4(3) and (4) come into operation. The sub-regulations read:

(3) If the opponent:
(a) does not serve a copy of the evidence in support in accordance with subregulation 5.7 (1); or
(b) serves a copy of a notice under subregulation 5.8 (1); or
(c) does not serve a copy of that notice within the time allowed in that subregulation;
and the opponent does not request a hearing under subregulation (2), the opposition proceedings are taken to have ended, but are not taken to have been discontinued or dismissed.
 (4) If:
(a) under subregulation (3) opposition proceedings are taken to have ended, but are not taken to have been discontinued or dismissed; and
(b) the Registrar is satisfied that the grounds on which the opposed application was made have been established;
the Registrar must determine the application in accordance with section 101 of the Act.

Section 101 authorises the Registrar to remove a trade mark registration in respect of all or any of the goods to which the application relates. Section 100 lays down that in any proceeding relating to an oppositions application, it is for the opponent to rebut any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the relevant period, been used, or been used in good faith, by its registered owner in relation to the relevant goods.

The opponent, Ferrero SpA, has not filed evidence of any use at all. It has failed to meet the onus imposed under Part 9 of the Act. Accordingly I find that its opposition to this removal fails.

I dismiss the opposition by Ferrero SpA and I order that trade marks numbers 205368 and 311634 be removed from the register.

Jock McDonagh
Hearing Officer

24 May 2001