MILKBEARS - 216038

Administrative Decision Number216038
Date09 June 2006
SectionTrade Marks Act, 1996 - 2003-2007
Decision in Hearing
IN THE MATTER OF an application for registration of Trade Mark No. 216038 and
in the matter of an Opposition thereto.
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.
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.
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

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