COMPLETE CUISINE survives opposition grilling
In Complete Cuisine Limited v Cuisine de France Limited, a hearing officer at the Irish Trademarks Registry has dismissed an opposition against the registration of a series of two COMPLETE CUISINE word and device marks.
Complete Cuisine Limited applied to register the marks for goods in Classes 16, 29 and 30 of the Nice Classification. The second mark in the series was to be used in the colours blue and red. The application was opposed by Cuisine de France Limited.
The first ground of opposition was that the mark lacked distinctiveness pursuant to Sections 6 and 8 of the Trademarks Act 1996. The hearing officer considered that the device element itself was enough to carry the mark and to render it sufficiently distinctive to qualify for registration. He also stated that the word elements did not designate (in the sense of naming) any of the products within the specification of goods in the applications, nor did they directly describe characteristics of any products.
The hearing officer then went on to consider Section 10(2) of the act and whether there was a likelihood of confusion on the part of the public between the subject marks and Cuisine de France's CUISINE DE FRANCE marks. He accepted that certain of the goods in respect of which registration was sought were identical to those in respect of which Cuisine de France's marks are protected. A global appreciation of the visual, aural and conceptual similarity between trademarks must be based on the overall impression created by the marks, bearing in mind, in particular, their distinctive and dominant components. In the case of a composite mark it is particularly important to consider, firstly, what constitutes the dominant feature that determines the overall impression created by the mark because consumers normally perceive a mark as a whole rather than analyzing its various elements separately. He took the view that the dominant component of each of the respective parties' marks was its verbal element, namely CUISINE DE FRANCE in one case and COMPLETE CUISINE in the other.
Although each mark consists of a reference to the word 'cuisine', its simultaneous use in the trademarks of two different undertakings in the food business was unlikely to be perceived by the average person as signifying a connection between those undertakings. The average person would be more likely to assume that the brands in question each feature the word simply for its value as a way of communicating a positive message about the products. Conceptually, the marks differed as Cuisine de France's mark referred to French cuisine, while COMPLETE CUISINE suggested a comprehensive range of products. Therefore, Complete Cuisine's mark made no connotation that it was specifically related to France and all that goes with French cooking. In addition, the hearing officer stated that COMPLETE CUISINE (and device) did not create the impression of being a sub-brand, associated brand or brand extension of the Cuisine de France brands. Consumers would view products sold under the COMPLETE CUISINE mark as alternative and competing products to those sold by Cuisine de France.
He concluded that the marks at issue here displayed only a low level of similarity. While they each contain the word 'cuisine' and share a number of other similar elements, the overall impressions created by them were quite different.
Finally, the hearing officer rejected Cuisine de France's claim that registration should be prevented on the grounds of passing off under Section 10(4). The hearing officer held there could be no passing off if the consumer is not likely to take Complete Cuisine's goods as being in any way connected with Cuisine de France. In addition, there was no evidence of a deliberate attempt on the part of Complete Cuisine in the adoption of its mark to piggy-back on the goodwill of Cuisine de France.
Patricia McGovern, P McGovern & Co Solicitors, Dublin
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