Oral-B Laboratories, Re Trade Marks Act [2000] EWCA Civ 288 (15 November 2000)

Oral-B Laboratories, Re Trade Marks Act [2000] EWCA Civ 288 (15 November 2000)

'CONTURA' is visually and phonetically similar to 'contour', which has a direct reference to the character or quality of toothbrushes; therefore, 'CONTURA' is not registrable under s.9 of the 1938 Act, nor is it appropriate for registration in Part B under s.10 due to lack of distinctiveness and use.

Citation
[2000] EWCA Civ 288
Parties
Applicant/appellant: Gillette Canada Inc (formerly Oral-B Laboratories); Opponent/respondent: Wisdom Toothbrushes Ltd
Jurisdiction
England and Wales
Judgment Date
15 November 2000
Procedural Posture
Trade Mark Opposition Appeals / Appeal From High Court (laddie J) to Court of Appeal
Outcome
Appeals dismissed
Legal Topics
Trade Mark Registration, Distinctiveness, Invented Words, Likelihood of Confusion, Relative Grounds for Refusal
Intellectual Property Trade Marks Trade Mark Registration Distinctiveness Invented Words Likelihood of Confusion Relative Grounds for Refusal

Case Brief

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Parties

Gillette Canada Inc (formerly Oral-B Laboratories)

Applicant/appellant

Wisdom Toothbrushes Ltd

Opponent/respondent

Procedural Posture

Trade Mark Opposition Appeals / Appeal From High Court (laddie J) to Court of Appeal

Legal Issues

  1. 1 Whether 'CONTURA' is registrable as a trade mark under s.9 of the Trade Marks Act 1938
  2. 2 Whether 'CONTURA' is an invented word or a mere variant of 'contour'
  3. 3 Whether 'CONTURA' has a direct reference to the character or quality of toothbrushes

Ratio Decidendi

'CONTURA' is visually and phonetically similar to 'contour', which has a direct reference to the character or quality of toothbrushes; therefore, 'CONTURA' is not registrable under s.9 of the 1938 Act, nor is it appropriate for registration in Part B under s.10 due to lack of distinctiveness and use.

Court Disposition

Appeals dismissed

Orders

  • Appeals dismissed with costs agreed in the sum of £9,000 to be divided equally between the two matters if there are two separate orders.
  • Permission to appeal to the House of Lords refused.