FINGERS - 253212

• Administrative Decision Number: 253212
• Date: 08 April 2019
• opponent: Mars Incorporated
• Section: Trade Marks Act, 1996 - 2018 - Current

1

DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS IN

PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

In the matter of an application for the registration of Trade Mark No. 253212 and in the matter of

an Opposition thereto.

CADBURY UK LIMITED Applicant

MARS INCORPORATED Opponent

The Application

1. On 14 November 2011 (“the relevant date”), CADBURY UK LIMITED of Bournville,

Birmingham, United Kingdom made application (No. 2011/01993) under Section 37 of the

Trade Marks Act, 1996 (“the Act”) to register FINGERS as a trade mark in respect of

“Chocolate, confectionery (other than frozen confections) and biscuits, all being goods in Class

30 of the Nice Classification.

2. During the examination of the application the Examiner raised, and subsequently maintained

on a number of occasions, objections to the application and indicated her intention to refuse the

application, following which the Applicant sought a Hearing of the matter. The Applicant was

heard, and the Hearing Officer accepted the application for all the goods on the basis that the

mark had acquired distinctiveness through the use made of it. The application was advertised

accordingly under No. 253212 in Journal No. 2290 dated 23 September 2015.

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

filed on 21 December 2015 by Mars Incorporated of Elm Street, McLean, Virginia, USA. The

Applicant filed a Counter Statement on 11 March 2016 and evidence was then filed under

Rules 20, 21 and 22 of the Trade Mark Rules, 1996 (“the Rules”). Both parties attended a

Hearing of the matter on 31 July 2018.

4. Acting for the Controller, I decided to uphold the opposition and to refuse to allow the

application to proceed to registration in respect of all goods. The parties were informed of my

decision by way of letter dated 20 August 2018. I now state the grounds of my decision and the

materials used in arriving thereat in response to a request by the Opponent in that regard

pursuant to Rule 27(2) of the Rules.

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Grounds of the Opposition

5. In its Notice of Opposition, the Opponent raises objections to the application on the grounds

that the mark applied for is descriptive and devoid of distinctive character and is therefore

incapable of distinguishing the goods and services of the Applicant from those of other

undertakings who trade in the goods in question. The mark does not satisfy the requirements of

Section 8(1)(a) of the Act – in that it is not a trade mark as defined by Section 6(1) of the Act,

and its registration would be contrary to Section 8(1)(b) in that it is devoid of any distinctive

character. The Opponent rejects any assertion the Applicant might make that the mark has

acquired a distinctive character as a result of use made of it, in respect of any or all of the

goods, prior to 14 November 2011.

6. The Opponent also grounds its opposition on Section 8(1)(c) of the Act claiming the mark is a

sign used extensively to designate the physical characteristics of the goods to which it refers.

The mark is a term that is commonly used and understood by consumers and traders alike as

designating goods that are approximately a finger’s length or are roughly the shape or

dimensions of a finger.

7. The Opponent cites Section 8(1)(d) as a ground of opposition claiming the mark consists

exclusively of a sign which has become customary in the current language and the bona fide

and established practices of the chocolate, biscuit and confectionery trades.

8. The opposition is also grounded on Section 8(3) of the Act, with the Opponent claiming the

registration of the mark would be contrary to public policy by awarding the Applicant

exclusive use of a term that is readily understood by all as referring to the shape of chocolate

and confectionery products and that would deprive and prevent others of the right to use this

legitimate and descriptive term in connection with their trade.

9. The Notice of Opposition also contains claims that the mark offends Section 8(4) on two

counts. First, that it is contrary to the European Parliament and Council Directive No.

2008/95EC of 22 October 2008 to approximate the laws of the Member States relating to trade

marks, and second, the application was made in bad faith. The Opponent lays out the bad faith

charge in terms that the Applicant, who is a well-established and well-known chocolatier,

confectioner and biscuit maker, must have knowledge that many entities use the mark

FINGERS on the same or similar goods as the Opponent’s goods and would appear on

retailers’ shelves alongside other brand owners’ products which use the word FINGERS. The

Opponent also claims the Applicant is seeking to protect its own commercial interests in a