Unilever Plc v Controller of Patents, Designs and Trade Marks and Sunrider Corporation (No 2)

• Jurisdiction: Ireland
• Judge: MR. JUSTICE T.C. SMYTH
• Judgment Date: 15 December 2006
• Neutral Citation: [2006] IEHC 427
• Court: High Court
• Date: 15 December 2006

[2006] IEHC 427

THE HIGH COURT

Record no. 2005/35SP

UNILEVER PLC v CONTROLLER OF PATENTS DESIGNS & TRADEMARKS & SUNRIDER CORPORATION

In the matter of the Trade Marks Act, 1963

And in the matter of Trade Mark Application 171850

SunSmile under the Trade Marks Act, 1963 in the name of

SUNRIDER CORPORATION and opposition thereto by UNILEVER

PLC

BETWEEN

UNILEVER PLC

Plaintiff

and

THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS AND SUNRIDER CORPORATION

Defendants

Abstract:

Intellectual property law - Trade Marks - Whether the defendant erred in law and/or in fact in dismissing the plaintiff’s opposition to the registration of Sunrider’s trade mark - Trade marks Act, 1963

The plaintiff appealed against the decision of the Controller dismissing the opposition of the plaintiff to the registration of “SunSmile” by the Sunruder corporation and permitting the said application to proceed to registration. The plaintiff submitted that the first named defendant erred in law or in fact in finding that there was only a very low level of similarity between the plaintiff’s “Sun” trademarks and the “SunSmile” application, in holding that the use of the “SunSmile” application in relation to dishwasher detergent would not be likely to cause deception or confusion, in finding that the “SunSmile” mark did not so nearly resemble the plaintiff’s registered marks and in finding that the plaintiff did not file any corroborating evidence in support of the assertion that it had used the prefix “Sun” for a “family” of marks in relation to soap and detergent products for a number of years.

Held by Smyth J. in favour of the plaintiff: That the Controller erred in law and in fact in finding that there was only a “low level of similarity” between the marks. The Controller erred in failing to take into account the first syllable of “SunSmile” in determining that the marks did not look or sound alike. Furthermore, the Controller erred in law and in fact in not finding that there was a risk of confusion and/or deception in this case in view of the inherent similarity of the marks and in view of the overall context in which the goods were sold and in view of the family of marks established by the applicant in evidence before the Controller.

Reporter: L.O’S.

1 MR. JUSTICE T.C. SMYTH DELIVERED WEDNESDAY, 15TH DECEMBER 2006

2 THE JUDGMENT OF THE COURT WAS GIVEN, AS FOLLOWS:

3 MR. JUSTICE SMYTH: This matter comes before the Court as an appeal by way of Special Summons by the Plaintiff pursuant to sections 26 and 57 of the Trade Marks Act1963 ("the 1963 Act") and Order 94, Rule 45 of the Rules of the Superior Courts, against a decision of the Controller of the 17th November 2004 deciding to dismiss the opposition by Unilever Plc ("Unilever") to the registration of "SunSmile" (Trade Mark No. 171850) by the Sunrider Corporation ("Sunrider") and to permit the said application to proceed to registration.

4 Unilever is a British public limited company and is one of the largest companies in Europe. Together with its subsidiaries, including its Irish subsidiary (Elida Lever), it is in the business of the sale of detergent products and soaps. This business has a long and successful history in Ireland, and at the time of the trade mark application which is the subject of this appeal, the sale by Unilever of its "Sun" products must have been one of the longest established and most successful examples of the sale of consumer goods in the Irish market.

5 On 6th April 1995, Sunrider applied to register "SunSmile" & device as a trade mark in Part A of the Register in Class 3. The application was advertised in the Patents Office Journal of 30th October 1996 and on 1st April 1997 notice of opposition was filed by F.R. Kelly & Co. on behalf of Unilever.

6 On 15th July 1997, a counter statement was filed on behalf of Sunrider by MacLachlen and Donaldson.

7 On 16th January 1998, Katrina Burchell made a statutory declaration on behalf of Unilever. This was replied to in a statutory declaration made by Oi-Lin Chen on behalf of Sunrider on 1st October 1998. Unilever then filed a statutory declaration of Nicola Hope dated 14th April 1999 as evidence under Rule 39.

8 An oral hearing took place on 20th May 2004 before the Controller's hearing officer, Mr. Tim Cleary. The parties were notified on 17th November 2004 that a decision had been made to dismiss the opposition. Thereafter, written grounds for that decision dated 30th November 2004 were furnished.

9 In the course of the examination of the application the specification of goods was amended to read as follows:

"Preparations included in Class 3 for the care of the skin, face and body; articles included in Class 3 for personal and beauty care; perfume; soap; bubble bath; bath and shower gel, moisturising and cleansing creams, lotions, gels scrubs, oil, splashes and balms for use on the body, eyes, hands and face; body and face powder, make-up brush sets, make-up sponges, rouge, eyebrow pencils, eyeliner, eyeshadow, lash enhancer mascara, lipstick, lip liner, facial cleansing and moisturising masks; articles included in Class 3 for the care and beauty of the hair; shampoo, conditioner, tonic, creme rinse, styling glaze, styling spray, styling mousse and styling gel, shaving creme, shaving foam and shaving gel; after shave lotion; skin cleansing creme and foam; nail enamel; nail lacquer; sunscreen; body shampoo; cellulite cremes, cellulite gels and cellulite lotion; contour cremes, contour gels and contour lotions; antiperspirants and deodorants for personal use; articles included in Class 3 for dental use; toothpastes, mouth washes, whitening gels, lip balm; household cleaning preparations included in Class 3; dishwasher detergents; cleaning detergents for clothes; detergents for use in washing dishes and detergents for use in washing produce, all being goods included in Class 3."

10 The application, when accepted, was accepted for registration in Part A of the Register and so advertised.

11 On being appealed to the Court by Unilever for special leave pursuant to section 26(9) of the Trade Marks Act, 1963, to bring forward further material for consideration on the appeal, a Judgment was given by Laffoy J on 21st November 2005 limiting the material that could be relied on for the purpose of this appeal to that which was before the Controller.

12 The grounds of appeal are quite extensive and are more particularly set out in paragraphs 2.1 to 2.26 of the Special Summons issued on 28th January 2005.

13 While no concession was made on any of the individual grounds of appeal, the case proceeded on the basis of specific reliance on material aspects which it is contended the Controller erred in his decision in failing to uphold the opposition of Unilever to the registration by Sunrider of the mark "SunSmile" in Class 3 in respect of goods for both personal and non-personal use.

14 The principal grounds of appeal advanced were as follows. The First Defendant erred in fact and in law in:

15 (a) Finding that there was only a very low level of similarity between the Plaintiff's "Sun" trademarks and the "SunSmile" application.

16 (b) Holding that the use of the "SunSmile" application in relation to dishwasher detergent would not be likely to cause deception or confusion and on that basis dismissing the opposition to registration of the "SunSmile" application under Section 19 of the 1963 Act.

17 (c) Finding that the Sunrider Corporation's "SunSmile" mark did not so nearly resemble Unilever's registered marks as follows:

18 (i) SUNFRESH (registration number 174880):

19 (ii) SUNLIGHT and SUNLIGHT plus device (registration numbers 31692, 31693, 34442, 34444, 66622, 71850 and 120187);

20 (iii) SUNSILK (registration numbers 50024 and 74148);

21 (iv) SUNSET (registration number 56628);

22 (v) SUNIL (registration number 61843);

23 (vi) SUNJA (registration number 80094);

24 (vii) SUN (registration number 109566);

25 (viii) SUN PROGRESS (plus device) (registration number 145463 and 147788).

26 (d) Attaching no weight to the fact that the earlier registration cited by the Plaintiff constituted a series of marks containing the prefix "Sun".

27 (e) Finding that the Plaintiff did not file any corroborating evidence in support of the assertion that it has used the prefix "Sun" for a "family" of marks in relation to soap and detergent products for a number of years.

28 It is undoubtedly true that in her statutory declaration Miss Burchell lays stress in the use and promotion of the trade mark "Sun" in respect of dishwasher products in particular but not exclusively.

The Legal Framework:

29 Section 19 of the 1963 Act provides as follows:

"It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a Court of law, or would be contrary to law or morality, or any scandalous design."

30 Section 20 of the 1963 Act provides at sub-paragraph (1) that:

"Subject to sub-section (2) of this section, no trade mark shall be registered in respect of any goods or description of goods that is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion."

31 Both sections make it clear that a mark is disentitled to registration if it is "likely to deceive or cause confusion". It is settled law that the persons to be considered in estimating whether the resemblance between the marks in question is likely to deceive and cause confusion are all of those persons who are likely to become purchasers of the...