High Court puts a lid on TUB-ITS opposition


In Cofresco Frischhalterprodukte GmbH & Co KG v Controller of Patents, Designs & Trademarks ([2007] IEHC 187), the Irish High Court has upheld the decision of the controller of the Irish Patents Office to dismiss Cofresco Frischhalterprodukte GmbH & Co KG's opposition against an application filed by Reynolds Metals Company to register the mark TUB-ITS for storage containers for household/kitchen use (Class 21 of the Nice Classification). The court held that there was no likelihood of confusion with Cofresco's earlier mark TOPPITS (and logo), which covers a broad Class 21 heading.

Although ultimately agreeing with the earlier finding that there was no likelihood of confusion, the court criticized the decision of the original hearing officer in one respect. The hearing officer had reasoned that, in choosing low-cost household storage containers, the average consumer would pay at least as much attention to functional considerations (size, shape, sturdiness) as to brand names. Accordingly, the hearing officer held that the trademark would play a lesser role in relation to the goods in question (as compared to food or clothing) and that this factor reduced any likelihood of confusion between the marks. The court rejected that such a consideration had a bearing on the assessment of the likelihood of confusion.

Both parties accepted that plastic containers for household/kitchen use would be purchased in a self-service context. The court found that, since the goods in question were of low-cost, consumers would not carry out a careful or in-depth examination of the respective marks when purchasing them. It was accepted that the goods would be purchased with a time difference, presumably since these goods are not of a type that form part of the weekly shop. Further, since the goods were likely to be purchased following visual inspection, the court believed that the visual and conceptual characteristics were more important than any aural similarity between the marks. The District Court of The Hague had, in a similar dispute between the two parties, upheld a likelihood of confusion. However, the Irish court believed that differences in language might have accounted for the fact that the Benelux judges did not place as much emphasis on the conceptual differences between the elements 'TOP' and 'TUB'. Also, the court pointed out that the substantial evidence of use presented to the Benelux court might have led to a different conclusion.

The judge in the Irish court considered whether it was appropriate to take into account her own experience as an ordinary shopper in the case of everyday self-service items. She concluded that where the goods in question are sold to the general public for consumption or domestic use, the judge should use his or her common sense and "own experiences as a potential buyer" to consider whether they would themselves be likely to be deceived or confused. It was, however, admitted that regard should be had to "some well-established assumptions about consumer behaviour".

The court appears to have taken the correct approach in dismissing the relevance of the hearing officer's view that purchasers of storage containers are less 'brand-aware' and more influenced by functional considerations. However, the judge's openness to give weight to her own "common sense" in assessing the likelihood of confusion arguably marks a change from the standard approach of the European Court of Justice, which has been to consider only the perspective of the average consumer. Certainly, the judge departed from the view of the experienced hearing officer when she found a conceptual meaning in the mark TOPPITS ("it conjures an idea of covering, in the sense of placing a top ... on an item"), where the hearing officer had thought it to be a "meaningless, invented word".

Clare Speed, FR Kelly & Co, Dublin

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