Cofresco Frischhalterprodukte GmbH & Co. K.G. (plaintiff) v. The Controller of Patents, Designs and Trade Marks, and Reynolds Metals Company (defendants)
Intellectual property - Trademarks - Application for registration of trade mark - Opposition to application by registered proprietor of existing trade mark - Appeal against dismissal of opposition by the Controller - Whether trade mark similar to earlier registered trade mark - Whether application for registration should be rejected - Likelihood of confusion between two trade marks - Principles to be applied - Trade Marks Act 1963 (No.9), s. 25 - Trade Marks Act 1996 (No.6), ss. 10(2)(b), 79.
The High Court (Mrs Justice Finlay Geoghegan); judgment delivered on 14 June 2007
In determining and assessing the likelihood of confusion for the purpose of section 10(2)(b) of the 1996 Act 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. In assess the degree of similarity between the 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. The visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components. The higher the degree of distinctiveness of the earlier trade mark the greater the protection granted to it and vice versa.
The High Court so held in dismissing the plaintiff's appeal.
Paul Coughlan BL for the plaintiff; Jonathan Newman BL for the second-named defendant
Mrs Justice Finlay Geoghegan commenced her judgment with an account of the background to the appeal. The plaintiff is the registered proprietor of a Community Trade Mark No. 001377514 TOPPITS (logo) which was registered for goods in classes 6, 16 and 21. The second named defendant applied on October 24th, 2001 to register TUB-ITS as a trade mark. A notice of opposition was filed on behalf of the plaintiff. Following a hearing, a decision was given on November 9th,2006, on behalf of the first named defendant dismissing the plaintiff's opposition. The written grounds of that decision by the Hearing Officer were dated November 29th, 2006. The plaintiff appealed against the decision of the first-named defendant dismissing its opposition pursuant to s. 79 of the 1996 Act.
Mrs Justice Finlay Geoghegan referred to section 79 of the Act of 1996 which provides:
"(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.
(2) On an appeal under this section-
(a) the Controller shall be entitled to appear and be heard, and
shall appear if so directed by the Court: and
(b) the Court may exercise any power which could have been exercised by the Controller in the proceedings from which the appeal is brought."
Mrs Justice Finlay Geoghegan said that at the date of commencement of the proceedings i.e February 8th, 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 1963 Act 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 first-named defendant. The first-named defendant 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. The parties therefore to the proceedings were the plaintiff and the second named defendant. It was common case between the parties and agreed by Mrs. Justice Finlay Geoghegan that, having regard to s. 79(2)(b) of the Act of 1996, the appeal was a re-hearing and that the court must consider and determine the same issue that was before the first-named defendant, namely the plaintiff's opposition to the registration of the defendant's trade mark. It was also agreed that it be determined on the evidence before the first-named defendant and exhibited in the grounding affidavit therein.
Mrs Justice Finlay Geoghegan stated that only one ground of opposition was pursued by the plaintiff before the Hearing Officer. The same ground was the subject matter of the appeal. It was that the application for registration should be rejected having regard to s. 10(2)(b) of the Act of 1996 which provides:
"A trade mark shall not be registered if because -
(a)
(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,
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."
It was common case that the plaintiff's trade mark was "an earlier trade mark" within the meaning of s. 10(2)(b). It was also agreed that the second-named defendant's trade mark would be registered for goods which were either identical or similar to the goods for which Cofresco's trade mark was protected. The goods for which the second-named defendant had sought registration were within Class 21 and specified as "storage containers, not of common metal, for household and kitchen use". The plaintiff's trade mark was also registered for Class 21.
Mrs Justice Finlay Geoghegan stated that the single issue to be determined was whether there was a likelihood of confusion between the plaintiff's trade mark TOPPITS and the second-named defendant's trade mark TUB-ITS within the meaning of s. 10(2)(b) of the Act of 1996. Counsel for both parties were in substantial agreement as to the general principles to be applied by the court in assessing the likelihood of confusion. These followed in particular from a number of decisions of the European Court of Justice and were summarised in the written submissions filed on behalf of the plaintiff as follows:
"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.
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. For this purpose the average consumer is deemed to be reasonably well informed, reasonably observant and circumspect.
3. The visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components. Each mark must be viewed as a whole and should not be dissected for the purposes of a comparison. This is because the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.
4. The higher the degree of distinctiveness of the earlier trade mark the greater the protection granted to it and vice versa. Distinctiveness may be inherent or enhanced by a reputation which the mark enjoys on the market."
Detailed oral submissions were made before Mrs Justice Finlay Geoghegan on the extent to which a decision maker, whether a hearing officer or judge, could bring to bear his/her own experience as a consumer in assessing the likelihood of confusion and for that purpose the circumstances in which the goods in question are marketed or the probable purchasing practices of consumers of such goods. Mrs Justice Finlay Geoghegan stated that the goods in question were essentially low-cost plastic re-sealable containers for general household or kitchen use.
Counsel for the plaintiff accepted that they were goods which in general were purchased by self-service in a supermarket context. They were not goods which were subject to any particular marketing or selling practices. No evidence had been adduced before the first-named defendant of any particular marketing or selling practices. Mrs Justice Finlay Geoghegan stated that in such circumstances, it appeared to her that the proper approach of a judge in bringing to bear his/her own experience as a consumer remained in accordance with the principles set out in the speech of Lord Diplock in the House of Lords in GE Trademark R.P.C. 297 where, at p. 321 in the context of a dispute as to whether the Court of Appeal should have confined itself to consideration of evidence of public opinion survey or were permitted to bring into account their own subjective impressions as to whether they themselves would have been likely to be confused, he stated that:
"where goods are of a kind which are not normally sold to the general public for consumption or domestic use but are sold in a specialised market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential. A judge, though he must use his common sense in assessing the credibility and probative value of that evidence is not entitled to supplement any deficiency in evidence of this kind by giving effect to his own subjective view as to whether or not he himself would be likely to be deceived or confused. where goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a 'jury question'. By that I mean: that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which had been adduced but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused. The question does not cease to be a 'jury question' when the issue is tried by a judge alone or on appeal by a plurality of judges.
The judge's approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number. That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself."
Mrs Justice Finlay Geoghegan stated that, as appeared, a judge may bring to bear his/her own experience as a potential buyer and common sense in assessing the likelihood of deception. It appeared similarly permissible for a judge to bring to bear his/own experience in determining the probable purchasing scenario of the goods in question in which the likelihood of deception must be determined. In doing so, regard should also be had, (in the absence of evidence to the contrary) to some well-established assumptions about general consumer behaviour. Counsel for the plaintiff placed particular reliance upon the fact that as the goods in question here were low cost goods that it was probable that they would be bought in a way in which there would be no careful or in-depth examination of the mark. He relied on the case of Unilever plc v. Controller of Patents, Designs and Trade Marks and Anor IEHC 427 (unreported, December 15th, 2006) where Smyth J. stated at p. 17:
"In my judgment, it is relevant, in considering the issue of the confusion, to consider the goods in respect of which the applicant seeks to register the mark. Dishwasher products are everyday household goods. The ordinary assumption that no very careful or in depth examination of the mark will be made therefore applies (Kerly 17.06)."
On the facts of the case Mrs Justice Finlay Geoghegan was satisfied that she should assume that no very careful or in-depth examination of the relevant trade marks would be made in the purchase of the goods concerned. Counsel for the plaintiff also submitted that the court should take into account the fact that the average consumer only rarely had the chance to make a direct comparison between the marks; was more likely to be purchasing the respective goods with a time difference and would have an imperfect recollection of the earlier mark. He referred in particular to what was stated by the European Court of Justice in Lloyd Schuhabrik Meyer & Co. GmbH v. Klijsen Handel BV at para. 26:
"For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question."
Mrs Justice Finlay Geoghegan agreed that such imperfect recollection should be taken into account.
Criticism was made by counsel for the plaintiff of the approach of the first-named defendant to the probable purchasing scenario insofar as he discounted the likelihood of confusion by reason of his view that the average consumer would be likely to pay at least as much attention to functional considerations as he would to brand names in choosing plastic kitchen and household storage containers. Mrs Justice Finlay Geoghegan accepted that the court should not take a similar approach observing that it did not appear a permissible consideration. Rather the context in which the court should make an assessment of the likelihood of confusion is as set out by the first-named defendant at para. 20 of his decision namely:
"in making an assessment of the likelihood of confusion, the scenario to be considered is that of the average consumer, who must be assumed to be already familiar with the opponent's product sold under its earlier trade mark, being exposed in the course of a typical shopping experience to goods bearing the mark applied for."
Mrs Justice Finlay Geoghegan stated that she had assessed the likelihood of confusion between the trade mark 'TUB-ITS', if registered, and the earlier registered trade mark 'TOPPITS' in accordance with the above principles and she had concluded that there was not a likelihood of confusion. In reaching that conclusion Mrs Justice Finlay Geoghegan took into account that the goods in question were identical or very similar; they were low-cost goods; they would be primarily purchased in a self-service supermarket context; there may be a time gap from one purchase to the next; a purchaser may not be presented simultaneously with goods bearing both trade marks; a purchaser may have an imperfect recollection of the trade mark 'TOPPITS' at the time of potential purchase of goods with the mark 'TUB-ITS' and the goods were of a nature where, as a matter of probability, there would not be detailed examination of the trade mark. Mrs Justice Finlay Geoghegan reached her decision having made a global assessment of the visual, aural and conceptual similarities of the marks by reference to the overall impression of the marks bearing in mind their distinctive and dominant components.
The court recognised that there were aural similarities of 'TOPPITS' and 'TUB-ITS'. However, in the probable purchasing scenario it appeared that the visual and conceptual characteristics of the marks were more important that the aural. The goods appeared, as a matter of probability, likely to be purchased following visual inspection. Insofar as a consumer may have an imperfect recollection of the mark 'TOPPITS', it appeared
that the visual and conceptual aspects of the two marks were likely to be more important than the aural to such imperfect recollection. The visual similarities of the marks were that they each begin with the letter 'T', have six letters and end with "ITS". The differences include 'TOPPITS' being one single word and 'TUB-ITS' being a hyphenated word. The visual impact of the hyphenated and non-hyphenated words was different.
However, more importantly the dominant visual impact was made by the first syllable of each mark. Mrs Justice Finlay Geoghegan stated that it appeared appropriate that the court should have particular regard to this. As Smyth J. stated in Unilever v. Controller of Patents, Designs and Trade Marks: "Whether two words are used or a compound word is used, if the emphasis is clearly on the first word or prefix in the compound word then it seems to me that that is the predominant sound and the visual impact of the mark." Mrs. Justice Finlay Geoghegan continued that in the English language the words "top" and "tub" were well known, commonly used words with distinctive meanings. 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 also appeared not to be similar in the English language. 'TUB-ITS' was a clear conjoining by the hyphen of two easily recognised words commonly used in the English language, the first of which has a clear connection with the type of goods to which it would be applied. It created an idea of placing some item or items (ITS) in a container (TUB). The impact of TOPPITS on the experienced hearing officer was that of a meaningless invented word.
The impact on other consumers may be similar. Mrs Justice Finlay Geoghegan stated that its impact on her was of an invented word but not totally meaningless. It conjured an idea of covering in the sense of placing a top (TOP) on an item or items (ITS). On either basis the conceptual impact was distinct from that created by the obviously meaningful TUB-ITS written as it is.
In reaching the above conclusion Mrs Justice Finlay Geoghegan carefully considered the judgment given by the Rechtbank's-Gravenhage [District Court of The Hague] on July19th, 2006 in a similar dispute between the parties herein in relation to the same two trade marks. There was, of course, the important difference between the assessments made in the respective proceedings that the consumers in Ireland were predominantly English speaking. It was common case between the parties that the likelihood of confusion in this jurisdiction in these proceedings must be assessed in that context. Whilst the court in The Hague did take into account the fact that qualified public in the Benelux countries competent in English might comprehend 'TUB-ITS' in a more descriptive way (in the context of conceptual similarity) it appeared to Mrs. Justice Finlay Geoghegan that the distinct visual impact of the dominant first syllables of 'top' and 'tub' and conceptual differences referred to above did not impact on the judges in that jurisdiction as they had on this court.
Language may account for that difference. It also appeared that, in accordance with the principles set out above, the court in The Hague concluded that, by reason of the use of 'TOPPITS' as a trade mark since at least 1985 and an annual turnover in Belgium and the Netherlands of approximately €7 million in the period 1999 to 2005 and amounts spent on promoting the mark, that 'TOPPITS' had "a large degree of distinctiveness and enjoys a considerable degree of consumer awareness". Such a conclusion on the facts may have justified a higher level of protection.
On the facts before her, Mrs. Justice Finlay Geoghegan did not consider that the plaintiff had made out a case for the court in this jurisdiction, to take into account a particularly high degree of distinctiveness of the earlier trade mark 'TOPPITS' such as it should be granted greater protection in accordance with the principles set out above. The plaintiff had given no evidence of any use of the trade mark in the Irish market, therefore it could not gain an enhanced reputation by reason of such use. It was distinctive, as one would expect of a registered trade mark.
However, it did not appear that it had any particularly inherent distinctiveness which would justify the court granting to it a higher level of protection than would be the norm created by the registration of a trade mark.
Mrs Justice Finlay Geoghegan so held in dismissing the plaintiff's appeal.
Solicitors: Beauchamps (Dublin) for the plaintiff; A.&L. Goodbody (Dublin) for the second-named defendant. Kieran O'Callaghan barrister