In Zaklady Przemyslu Cukierniczego Mieszko Spólka Akcyjna v Leaf United Kingdom Limited, the acting controller has partially upheld an opposition against the registration of the mark CHEWIES for foodstuffs.
Zaklady Przemyslu Cukierniczego Mieszko Spólka Akcyjna (Mieszko) is the owner of an international registration for the trademark CHEWIES for goods in Class 30 of the Nice Classification - namely "coffee, tea, cocoa, rice, tapioca, sago, flour, cereal preparations, bread, confectionery and sweets, ice creams, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, ice". Mieszko sought to extend protection of the international registration to Ireland. On advertisement, the mark was opposed by Leaf United Kingdom Limited.
Leaf based its objections on its prior registration and use of the trademark CHEWITS. In particular, Leaf argued that:
- certain of the goods covered by the international registration - namely, confectionery and sweets - were identical to those covered by Leaf’s earlier trademark; and
- other goods - namely, ice creams, honey and treacle - were similar to those covered by Leaf’s mark.
The acting controller was of the view that there was a high degree of similarity between the marks CHEWITS and CHEWIES on a visual comparison. There was also a certain similarity between the words from a conceptual point of view. In addition, the words sounded quite similar, although this was not regarded as a very significant factor in the context of goods that are usually purchased on the basis of a visual inspection. According to the acting controller, the goods at issue were low-cost “impulse purchases”. Therefore, the degree of attentiveness and consideration applied by the average consumer in the typical purchasing scenario should be assumed to be relatively low. In the acting controller's view, the high degree of similarity between the trademarks, taken together with the circumstances of product selection and the behaviour to be expected of the average consumer, was such that confusion would be quite likely insofar as the use of Mieszko’s mark in relation to confectionery and sweets was concerned. The acting controller thus decided that the opposition should succeed in relation to those goods.
As regards ice creams, honey and treacle, the acting controller stated that there would be a likelihood of confusion in circumstances where “the public could believe that the [respective] goods […] come from the same undertaking or, as the case may be, from economically linked undertakings”. Therefore, he held that the opposition should succeed insofar as these goods were concerned.
As regards the remainder of the goods, the acting controller held that there was no real prospect of direct confusion, given the differences between those goods and the goods for which Leaf’s trademark is protected. While the remaining goods fell within the same class of foodstuffs as those covered by Leaf's earlier registration, the acting controller was of the view that they were not goods that would normally be regarded as similar to the kind of confectionery products covered by Leaf’s trademark. The acting controller held as follows:
- One set of goods would not be considered as a substitute for the other. Therefore, the goods were not in competition with each other or complementary.
- The goods at issue were not normally displayed for sale together on supermarket shelves.
- Their basic ingredients and manner of manufacture were different and the general perception would not be that the manufacturers of one category of goods would be likely to be involved in trade in the other category of goods.
Therefore, there was no appreciable risk of indirect confusion or confusion by association. The acting controller thus rejected the opposition as regards these goods.
Patricia McGovern, DFMG Solicitors, Dublin
