Application for UFIX marks collapses
The acting controller at the Irish Patents Office has upheld an opposition against Masonry Fixing Services Limited's application to register a UFIX word mark and a UFIX device mark for goods in Classes 1, 6, 7, 8, 17 and 20 of the Nice Classification (June 12 2007). Unifix Limited opposed registration, alleging that it had used the registered mark UNI-FIX for a wide range of fixing products since 1970 and had an annual turnover in the region of €2.3 million for the period 1997 to 2003 in goods sold under the mark.
Masonry Fixing alleged that it had used its marks since 1997 and had turnover in the region of €450,000 for the period June 2001 to July 2004 in goods sold under the trademark UFIX. Masonry Fixing's business is direct sales of products to end users and it had not come across any confusion between UFIX and UNI-FIX. It alleged that UNI-FIX designates "single" or "one-fixing" and differs in meaning from its own marks.
The acting controller upheld the opposition on the following grounds:
- The mark UNI-FIX was in use and as such the registration of Masonry Fixing's mark could render it liable to an action for passing off. However, Unifix had not specifically pleaded an objection based on passing off so the acting controller rejected this argument.
- Considering the likelihood of confusion, the acting controller noted that the UFIX and UNI-FIX marks share the same character string 'U-F-I-X', starting with 'U' and ending with 'FIX'. He also pointed out that they have a similar look and sound differentiated only by the letters 'NI'. He dismissed Masonry Fixing's claim that UFIX would be viewed by the average consumer as 'YOU FIX' on the grounds of lack of evidence. Ultimately, the concept that is evoked by Unifix's mark is fixing or securing, which is the same as that evoked by the applied-for marks.
- The acting controller was satisfied that it was correct to assess the likelihood of confusion between the marks in the context of the specific goods which are common to both the earlier mark and the applications for registration, namely general hardware items. Goods such as these are often chosen by reference to the functional qualities rather than to the brand. Retailers may, however, rely on these brands. Thus, there is less likelihood of confusion by retailers as they will take more care in ordering and be more familiar with suppliers. Nonetheless, in the acting controller's view, confusion could still arise. Accordingly, the use of the marks applied for in relation to the goods in question could give rise to confusion because of the high degree of similarity between the respective marks.
- The evidence supplied by Masonry Fixing to the effect that it is a direct sales organization and the potential for confusion at the point of sale was reduced did not mean there was no likelihood of confusion in the ordinary course of trade.
- The acting controller dismissed the objection of 'unfair advantage'. Despite evidence that Unifix had 30 years of use of the mark and a large turnover it did not produce evidence of market share and no evidence that the mark had become particularly well known or of high repute.
Patricia McGovern, DFMG Solicitors, Dublin
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