Spirits Product International Intellectual Property B.V. v Diageo Brands B.V

This matter concerned an opposition by Diageo Brands B.V. (the opponent) to an application for registration of a trade mark by Spirits Product International Intellectual Property B.V. (the applicant). The opposition was heard by Debrett Lyons, a Hearing Officer of the Trade Marks Hearings.

The Hearing Officer was required to determine whether the grounds of opposition relied upon by the opponent, specifically those under sections 42(b) and 44 of the relevant Act, were established. The opponent initially listed all available grounds of opposition but at the hearing, narrowed its focus to these two sections.

In relation to section 44, the Hearing Officer considered whether the applicant's trade mark was substantially identical with, or deceptively similar to, a registered trade mark owned by the opponent, in respect of similar goods or closely related services. The opponent relied on trade mark registration number 928381, which pre-dated the application's priority date. The Hearing Officer found that the trade marks were not substantially identical and that the sole question was whether they were deceptively similar, defined as being likely to deceive or cause confusion. The Hearing Officer also considered the definition of similar goods. Ultimately, the Hearing Officer found that the section 42(b) ground of opposition was not established.

As the opposition was not established, the Hearing Officer directed that the application be registered one month from the date of the decision, subject to payment of the sealing fee and any appeal proceedings. The Hearing Officer also ordered that the opponent pay the applicant's costs.