Average consumers will not pay much attention when buying low-value items


In Razneck Limited v Dairyglen Products Limited, the hearing officer has upheld oppositions against the registration of two series of marks with regard to certain goods in Class 30 of the Nice Classification.

On April 14 2011 Razneck Limited, a retailer of frozen yoghurt, applied to register the following series of trademarks in respect of various goods and services in Classes 29, 30 and 43:

The applicant also applied to register the following series of marks on July 14 2011:

Both applications were opposed by Dairyglen Products Limited, a manufacturer and merchant of ice cream, preparations for making ice cream, confectionary and related products. The oppositions were based on the opponent’s prior Irish registration for the word mark SMOOCH in Class 30, and on the following Community trademark (CTM) registration for a logo mark in respect of goods and services in Classes 29, 30 and 43:

The opponent claimed that the applications should be rejected on both absolute grounds and relative grounds. In relation to the relative grounds, the opponent claimed that:

  • there existed a likelihood of confusion between its marks and the applicant’s marks pursuant to Section 10(2) of the Trademarks Act 1996;
  • the use of the marks would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the opponent’s marks (Section 10(3) of the act); and
  • use of the marks was liable to be prevented by virtue of any rule of law protecting an unregistered trademark or other sign (Section 10(4) of the act).

Although two separate decisions were issued (see here and here), the reasons given for both decisions were largely the same. The hearing officer did note, in relation to the applicant’s second application, that since the words 'natural frozen yoghurt' were descriptive of many of the goods traded under the applicant’s mark, he had ignored these words when assessing the likelihood of confusion for any goods that were apt to be described by that term. However, ultimately the same conclusion on likelihood of confusion was reached in both decisions.

Since no arguments were advanced as to why either of the applications should be refused on absolute grounds, the hearing officer duly dismissed both oppositions on these grounds. He was also of the view that no likelihood of confusion existed between the applicant’s marks and the opponent’s CTM registration for the logo mark. While he accepted that a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, he was still of the view that the differences between the applicant’s marks and the opponent’s logo mark were “so striking and obvious” that they could not “be offset by the level of identity and similarity that exists between the respective goods and services”. Therefore, the oppositions on the grounds of Section 10(2) were dismissed in relation to the opponent’s logo mark.

Turning to the opponent’s word mark SMOOCH, which was registered in respect of “ice cream, frozen confectionery, preparations in this class for making the aforesaid goods” in Class 30, the hearing officer took into account that the goods were low-value items and the average consumer would not pay much attention to the purchase of such items. He was prepared to find a likelihood of confusion in respect of “confectionery; ices; frozen yoghurt and frozen yoghurt based desserts combined with fruit and sauces”, but not for any of the other goods and/or services applied for by the applicant.

The hearing officer also had some interesting points to make in relation to Section 10(3) of the act. He noted that, in order for an opposition to succeed on this ground, a number of conditions needed to be fulfilled. In particular, there was a requirement that the earlier mark have a reputation in the state. He made reference to the Paris Convention and noted that the type of reputation that Section 10(3) sought to protect “would be expected to extend beyond the limited class of consumers of the opponent’s goods and to penetrate the consciousness of the wider public such that a substantial number of people would know and recognise the mark even if they had never used the opponent’s goods”. The hearing officer was not satisfied that this was the case and duly rejected the oppositions on this ground.

In relation to Section 10(4) of the act, the hearing officer focused on whether a claim for passing off could be made. He noted that the opponent had not even mentioned let alone provided evidence to support claims of misrepresentation” and therefore also dismissed the oppositions on this ground.

The oppositions were thus upheld only in relation to “confectionery; ices; frozen yoghurt and frozen yoghurt based desserts combined with fruit and sauces” in Class 30.

Ciaran O’Neill, DFMG Solicitors, Dublin

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