Mount Everest Mineral Water Limited v Himalayan Spring Mineral Water

This decision concerns an opposition to a trade mark application by Mount Everest Mineral Water Limited against Himalayan Spring Mineral Water. The dispute centred on whether the proposed trade mark was likely to deceive or confuse consumers under section 43 of the relevant Act, due to its connotations. The hearing was conducted by Heath Wilson, Hearing Officer, at the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was to determine if the trade mark "Himalayan Spring Mineral Water" was likely to be misdescriptive or otherwise deceptive or confusing, thereby establishing a ground for opposition under section 43 of the Act. The Hearing Officer also had to consider the appropriate course of action under section 55 of the Act, which governs the Registrar's decision on trade mark applications following an opposition, including the possibility of registration with conditions.

The Hearing Officer found that the trade mark, by its very name, carried connotations that had the potential to cause confusion among consumers. To mitigate this likelihood of deception or confusion, and in accordance with the Registrar's power to impose conditions on registration under section 55(1)(b), the Hearing Officer decided to apply an endorsement to the trade mark. This condition stipulated that the trade mark could only be used on mineral water bottled in the Himalayas and accompanied by the sound of chanting Tibetan monks. The opposition was therefore partially established, allowing the application to proceed to registration subject to this condition.

Regarding costs, despite the opponent partially succeeding on the ground of opposition, the Hearing Officer ordered that each party bear its own costs. This decision was influenced by the manner in which the opposition had been conducted, specifically noting the opponent's numerous requests for extensions of time for evidence, which were not ultimately followed by the provision of evidence.