Cofresco Frischhalterprodukte GmbH & Company v The Controller of Patents, Designs and Trade Marks and Reynolds Metals Company

• Jurisdiction: Ireland
• Judge: Ms. Justice Finlay Geoghegan
• Judgment Date: 14 June 2007
• Neutral Citation: [2007] IEHC 187
• Court: High Court
• Docket Number: [2007 Nos. 103 SP & 52 COM]
• Date: 14 June 2007

COFRESCO FRISCHHALTERPRODUKTE GMBH & CO KG v CONTROLLER OF PATENTS, DESIGNS AND TRADEMARKS & REYNOLDS METALS COMPANY

IN THE MATTER OF THE TRADE MARKS ACT, 1996

AND IN THE MATTER OF AN APPLICATION PURSUANT TO THE TRADE

MARKS ACT, 1996 BY REYNOLDS METALS COMPANY DATED 24TH

OCTOBER, 2001 FOR REGISTRATION OF "TUB-ITS" AS A TRADE MARK IN

CLASS 21 OF THE REGISTER OF TRADE MARKS

BETWEEN/

COFRESCO FRISCHHALTERPRODUKTE GmbH & CO. K.G.

PLAINTIFF

AND

THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS AND REYNOLDS METALS COMPANY

DEFENDANTS

[2007] IEHC 187

NO. 103 SP/2007

NO. 52 COM/2007

THE HIGH COURT

COMMERCIAL

INTELLECTUAL PROPERTY

Trade marks

Registration - Opposition - Likelihood of confusion - Registered trade mark in respect of identical or similar goods - Degree of similarity of marks - Every day household goods - Average consumer - Degree of distinctiveness - Whether likelihood of confusion due to similarity of marks - Whether judge can bring own experience to bear - Whether court can assume no careful or in depth examination of marks on every day household goods - Whether earlier mark distinctive - Sabel v Puma (Case C-251/95) [1997] 1 ECR I-6191, Lloyd Schuhfabrik Meyer v Klijsen Handel (Case C-342/97) [1999] ECR I-3819, Gut Springenheide and Tusky v Oberkreisdirektor Steinfurt (Case C-210/06) [1998] ECR I-4657 and Lloyd Schuhfabrik Meyer v Klijsen Handel (Case C-342/97) [1999] ECR I-3819 applied; GE Trade Mark [1973] RPC 297 followed; Unilever plc v Controller of Patents [2006] IEHC 427 (Unrep, Smyth J, 15/12/2006) considered - Trade Marks Act 1996 (No 6), ss 10(2) and 79 - Claim dismissed (2007/103SP & 52COM - Finlay Geoghegan J - 14/6/2007) [2007] IEHC 187

Cofresco Frischhalterprodukte Gmbh v Controller of Patents

The plaintiff who was the registered proprietor of the trade mark 'TOPPITS' appealed against the decision of the first named defendant (the Controller) dismissing its opposition to the application by the second named defendant to register 'TUB-ITS' as a trade mark. The plaintiff submitted that the application for registration should have been rejected having regard to s. 10(2)(b) of the Act of 1996, as its trade mark was an earlier trade mark, which was similar to the second named defendant's trade mark, it related to goods that were either identical or similar to the goods for which the second named defendant sought registration and consequently the registration of the second named defendant's trade mark was likely to cause confusion on the part of the public. The goods in question were essentially low cost plastic re-sealable containers for general household or kitchen use.

Held by Finlay Geoghegan J. in disallowing the appeal: 1. That the visual impact of the hyphenated and non-hyphenated words comprising the two trade marks was different and the dominant visual impact of each mark being associated with "tub" and "top" respectively appeared quite distinctive and not likely to lead to confusion. Conceptually the marks did not appear to be similar in the English language. Furthermore, the plaintiff's trade mark did not have any particularly inherent distinctiveness such as to justify the granting to it by the court of a higher level of protection.

Consequently, there was not a likelihood of confusion between the earlier trade mark 'TOPPITS' and the trade mark 'TUB-ITS' sought to be registered by the second named defendant.

Reporter: L. O'S

TRADE MARKS ACT 1996

TRADE MARKS ACT 1996 S79

RSC O.94 r48

TRADE MARKS ACT 1963 S25

TRADE MARKS ACT 1996 S79(2)(a)

TRADE MARKS ACT 1996 S79(2)(b)

TRADE MARKS ACT 1996 S10(2)(b)

GE TRADEMARK 1973 RPC 297

UNILEVER PLC v CONTROLLER OF PATENTS DESIGNS & TRADEMARKS & SUNRIDER CORPORATION UNREP SMYTH 15.12.2006 2006 IEHC 427

LLOYD SCHUHFABRIK MEYER & CO GMBH v KLIJSEN HANDEL BV ECR 1999 I-03819

1 Judgment of Ms. Justice Finlay Geoghegan delivered the 14th day of June, 2007 .

2 The plaintiff ("Cofresco") is the registered proprietor of a Community Trade Mark No. 001377514 TOPPITS (logo) which is registered for goods in classes 6, 16 and 21. The second named defendant ("Reynolds") applied on 24th October, 2001, to register TUB-ITS as a trade mark. A notice of opposition was filed on behalf of Cofresco. Following a hearing, a decision was given on 9th November, 2006, on behalf of the first named defendant ("the Controller") dismissing Cofresco's opposition. The written grounds of that decision by the Hearing Officer are dated 29th November, 2006.

3 Cofresco brings this appeal against the decision of the Controller dismissing its opposition pursuant to s. 79 of the Trade Marks Act, 1996.

The appeal

4 Section 79 of the Act of 1996 provides:

5 2 "(1) Unless otherwise provided by rules of court, within the period of three months from the date of a decision of the Controller under this Act, an appeal shall lie from the decision to the Court.

6 (2) On an appeal under this section-

7 a ( a) the Controller shall be entitled to appear and be heard, and shall appear if so directed by the Court: and

8 b ( b) the Court may exercise any power which could have been exercised by the Controller in the proceedings from which the appeal is brought.

9 (3) By leave of the Court, an appeal from a decision of the Court under this section shall lie to the Supreme Court on a specified point of law."

10 At the date of commencement of these proceedings (8th February, 2007) there were no Rules of Court specifically applicable to appeals pursuant to this section. Order 94, r. 48 of the Rules of the Superior Courts applied to appeals brought pursuant to s. 25 of the Trade Marks Act, 1963 and provided that they should be by way of re-hearing and, except with special leave of the Court, on the same evidence as that before the Controller.

11 The Controller did not appear at the hearing before the Court. He was not obliged to do so as no direction had been given under s. 79(2)(a) of the Act of 1996. Insofar as in this judgment I refer to "the parties", I am referring to the plaintiff and second named defendant being the parties appearing at the hearing. It was common case between the parties that, having regard to s. 79(2)(b) of the Act of 1996, this appeal is a re-hearing and that the Court must consider and determine the same issue that was before the Controller, namely Cofresco's opposition to the registration of Reynolds' trade mark. This appears correct. It was also agreed that it be determined on the evidence before the Controller and exhibited in the grounding affidavit herein.

Ground of opposition

12 Only one ground of opposition was pursued by Cofresco before the Hearing Officer. The same ground is the subject matter of this appeal. It is that the application for registration should be rejected having regard to s. 10(2)(b) of the Act of 1996. This provides:

"A trade mark shall not be registered if because -"

13 (a) ...

14 (b) it is similar to an earlier trade mark and would be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

15 there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the later trade mark with the earlier trade mark."

16 It is common case that Cofresco's trade mark is "an earlier trade mark" within the meaning of s. 10(2)(b). It is also agreed that Reynolds' trade mark would be registered for goods which are either identical or similar to the goods for which Cofresco's trade mark is protected. The goods for which Reynolds has sought registration are within Class 21 and specified as "storage containers, not of common metal, for household and kitchen use". Cofresco's trade mark is registered for Class 21.

17 The single issue to be determined is whether there is a likelihood of confusion between the Cofresco trade mark TOPPITS and the Reynolds' trade mark TUB-ITS within the meaning of s. 10(2)(b) of the Act of 1996.

18 Counsel for Cofresco and Reynolds are in substantial agreement as to the general principles to be applied by the Court in assessing the likelihood of confusion. These follow in particular from a number of decisions of the European Court of Justice. They are well summarised in the written submissions filed on behalf of Cofresco as follows:

19 2 "1 In determining and assessing the likelihood of confusion for the purpose of section 10(2)(b), account must be taken of all the circumstances of the case, including the degree of similarity between the two marks and between the goods or services, the likelihood that the public will make an association between the earlier mark and the mark in respect of which registration is sought, and the distinctiveness of the earlier mark. [Case C-251/95 Sabel BV v. Puma AG [1997] 1 E.C.R. I-06191 (paragraph 22)].

20 2 In assessing the degree of similarity between two marks, the decision maker must determine the degree of visual, aural and conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed. [Case C-342/97 Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV [1999] E.C.R. I-03819 (paragraph 27)] For this purpose the average consumer is deemed to be reasonably well informed, reasonably observant and circumspect. [ Lloyd Schuhabrik Meyer & Co. GmbH v. Klijsen Handel BV (paragraph 26)]

21 3 The visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks bearing...