RANDOM ACTS OF HAPPINESS - 244661

Date12 September 2014
Administrative Decision Number244661
opponentSOCIÉTÉ DES PRODUITS NESTLÉ S.A.
SectionTrade Marks Act, 1996 - 2008-2017
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 registration of Trade Mark No. 244661 and in the matter of
an Opposition thereto.
UNILEVER PLC Applicant
(Represented by FRKelly)
SOCIÉTÉ DES PRODUITS NESTLÉ, S.A. Opponent
(Represented by Tomkins & Co.)
The Application
1. On 30 November, 2010, Unilever PLC, a British company, of Port Sunlight, Wirral,
Merseyside, United Kingdom, made application (No. 2010/02065) under Section 37 of the
Trade Marks Act, 1996 (“the Act”) to register the words RANDOM ACTS OF
HAPPINESS” as a Trade Mark in respect of Ice cream, water ices, frozen confections,
preparations for making the aforesaid goods in Class 30.
2. The application was accepted for registration and advertised accordingly under No.
244661 in Journal No. 2172 dated 16 March, 2011.
3. Notice of Opposition to the registration of the mark pursuant to Section 43 of the Act was
filed on 14 June, 2011 by Société Des Produits Nestlé, S.A., of 1800 Vevey, Canton of
Vaud, Switzerland. The Applicant filed a counter-statement on 8 September, 2011 and
evidence was, in due course, filed by the parties under Rules 20, 21 and 22 of the Trade
Marks Rules, 1996 (“the Rules”).
4. Both parties filed written submissions in lieu of attending a Hearing in the matter and each
filed written submissions in reply to other party’s written submissions. Acting for the
Controller, I decided to dismiss the opposition and to allow the application to proceed to
registration. The parties were informed of my decision by way of letter dated 10 July,
2014. 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 Trade
Mark Rules 1996.
2
Grounds of the Opposition
5. In its Notice of Opposition the Opponent refers to its proprietorship of two Irish trade
marks, RANDOMS (No. 239647) and LET YOUR RANDOM SIDE OUT (No. 242436),
each registered in respect of the following goods:
Class: 29
Vegetables and potatoes (preserved, dried or cooked), fruits (preserved, dried or
cooked), frozen fruits and vegetables, mushrooms (preserved, dried or cooked),
meat, poultry, game, fish and seafood, all these products also in the form of
extracts, soups, jellies, pastes, preserves, ready-made dishes, frozen or
dehydrated; jams; eggs; milk, cream, butter, cheese and other food preparations
having a base of milk; milk substitutes; milk-based beverages; milk-based and
cream-based desserts; yoghurts; soya milk (milk substitute), soya-based
preparations; edible oils and fats; protein preparations for human food; non-dairy
creamers; sausages; charcuterie; peanut butter; soups, soup concentrates, broth,
stock cubes, bouillon, consommes.
Class: 30
Coffee, coffee extracts, coffee-based preparations and beverages; iced coffee;
coffee substitutes, extracts of coffee substitutes, preparations and beverages
based on coffee substitutes; chicory; tea, tea extracts, tea-based preparations and
beverages; iced tea; malt-based preparations; cocoa and cocoa-based
preparations and beverages; chocolate, chocolate products, chocolate-based
preparations and beverages; confectionery, sweets, candies; sugar; chewing
gum; natural sweeteners; bakery products, bread, yeast, pastry; biscuits, cakes,
cookies, wafers, toffees, puddings; ice cream, water ices, sherbets, frozen
confections, frozen cakes, soft ices, frozen desserts, frozen yoghurts; binding
agents for making ice cream and/or water ices and/or sherbets and/or frozen
confections and/or frozen cakes and/or soft ices and/or frozen desserts and/or
frozen yoghurts; honey and honey substitutes; breakfast cereals, muesli, corn
flakes, cereal bars, ready-to-eat cereals; cereal preparations; rice, pasta, noodles;
foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-
made dishes; pizzas; sandwiches; mixtures of alimentary paste and oven-ready
prepared dough; sauces; soya sauce; ketchup; aromatising or seasoning products
for food, edible spices, condiments, salad dressings, mayonnaise; mustard;
vinegar.
And then raises objection to the present application under various Sections of the Act,
which I shall summarise as follows:
- Section 8(1)(a) the mark does not fall within the definition of a trade mark;
- Section 8(1)(b) mark devoid of any distinctive character;
- Section 8(1)(d) mark consists exclusively of signs or indications which have become
customary in the trade;

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