MILKBEARS - 216038

• Administrative Decision Number: 216038
• Date: 09 June 2006
• opponent: NESTLÉ S.A. SOCIÉTÉ É
• 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. 216038 and

in the matter of an Opposition thereto.

NEWMANS CHOCOLATES LIMITED Applicant

SOCIÉTÉ DES PRODUITS NESTLÉ S.A. Opponent

The application

1. On 11 November, 1999, Newmans Chocolates Limited, a British company, of

Moorside Road, Winnall, Winchester/Hampshire SO23 7SA, United Kingdom

made application (No. 1999/03953) under Section 37 of the Trade Marks Act,

1996 (“the Act”) to register the word “Milkbears” as a Trade Mark in respect of

“candy, chocolate, chocolate candies and pastries in Class 30”.

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

No. 216038 in Journal No. 1894 on 12 July, 2000.

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

Act was filed on 9 October, 2000 by Société des Produits Nestlé S.A., a Société

Anonyme organised and existing under the laws of Switzerland, of Case Postale

353, 1800 Vevey, Switzerland. The Applicant filed a counter-statement on 16

January 2001 and evidence was, in due course, filed by the parties under Rules 20

and 21 of the Trade Marks Rules, 1996 (“the Rules”).

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

on 24 April, 2006. The parties were notified on 8 May, 2006 that I had decided to

dismiss the opposition and to allow the application to proceed to registration. I

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

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Notice of Opposition

5. In its Notice of Opposition the Opponent refers to its proprietorship of Trade

Mark Registration No. 106730, NESTLE MILKY BAR, which is registered as of

12 January, 1981 in Class 30 in respect of “non-medicated confectionary

containing milk, being in bar form”. It claims to have a very substantial

reputation in Ireland under that mark and then raises objection to the present

application under the following Sections of the Act:

- Section 10(2)(b) – likelihood of confusion on the part of the public,

- Section 10(3) – use of mark would take unfair advantage of, or be detrimental

to, distinctive character or reputation of Opponent’s mark,

- Section 10(4)(a) – use of mark liable to be prevented by virtue of law

protecting unregistered trade mark,

- Section 8(1)(b) – mark devoid of any distinctive character,

- Section 8(3)(b) – mark of such a nature as to deceive,

- Section 8(4)(a) – use of mark prohibited by enactment or rule of law,

- Section 8(4)(b) – application for registration made in bad faith,

- Sections 37(2) and 42(3) – Applicant does not use or intend to use mark in

relation to goods covered by application.

Counter-Statement

6. In its Counter-Statement the Applicant denies all of the grounds of opposition and

admits only the Opponent’s proprietorship of Trade Mark Registration No.

106730, although it does not accept the validity of that registration or its relevance

to the present proceedings.

The evidence

Rule 20

7. Evidence submitted by the Opponent under Rule 20 consisted of a Statutory

Declaration (and Exhibits JPM1-JPM3), dated 23 July, 2002, of Sandrine Royer,

Authorised Signatory of the Opponent. She says that the Opponent’s trade mark

NESTLE MILKY BAR was used in Ireland as early as the 1950’s and that, since

1996, turnover in goods sold under the mark amounted to €16,347,765.

Approximately €127,000 was spent on advertising goods sold under the mark in