Nestlé fails to prevent registration of Unilever's 'random' mark

In Unilever Plc v Société Des Produits Nestlé SA, the hearing officer has dismissed an opposition against the registration of the mark RANDOM ACTS OF HAPPINESS.

On November 30 2014 Unilever Plc applied to register the mark RANDOM ACTS OF HAPPINESS in Class 30 of the Nice Classification in respect of “ice cream, water ices, frozen confections, preparations for making the aforesaid goods”. On advertisement the application was opposed by Société Des Produits Nestlé SA.

The hearing officer, acting on behalf of the controller, decided to dismiss the opposition and allow the application to proceed to registration.

The opponent relied in its opposition on its two Irish trademarks for RANDOMS and LET YOUR RANDOM SIDE OUT, both of which are registered in Class 30, among others, in respect of “ice cream, water ices, sherbets, frozen confections, frozen cakes, soft ices, frozen desserts...; binding agents for making ice cream and/or water ices and/or sherbets and/or frozen confections and/or frozen cakes and/or soft ices and/or frozen desserts”, among other goods.

The hearing officer considered whether there was any likelihood of confusion between the mark applied for and the opponent’s marks under Section 10(2) of the Irish Trademarks Act 1996. He found that there was no likelihood of confusion in this case for a number of reasons.

The hearing officer first assessed the level of similarity between the mark applied for and the opponent’s mark RANDOMS. Taking the marks as a whole, he noted that the level of aural and visual similarity was low. Whilst the hearing officer noted that the start of a word mark is generally the most important in terms of its visual and aural identity, he noted that the word 'random' was “neither the dominant nor the distinctive nor the memorable component" of the mark applied for. He stated that, in his opinion, “the average consumer is more likely to recall the 'acts of happiness' element rather than the 'random' element. 'Random' merely describes or qualifies the type of 'acts of happiness' to be performed”.

In relation to the conceptual similarity, the hearing officer noted that the word 'randoms' is an invented term that has no meaning. He noted that the mark applied for “has [a] clear meaning and refers to a gesture done in order to make someone happy”. He found that there was a very negligible level of conceptual similarity between the opponent’s RANDOMS mark and the mark applied for.

The hearing officer then compared the mark applied for and the opponent’s LET YOUR RANDOM SIDE OUT mark. He noted that, visually and aurally, they share the word 'random' but “nothing else”. He stated that “these marks are far more dissimilar than similar”, with the opponent’s mark consisting of five words with the word 'random' as the third word, while the mark applied for consisted of four words with 'random' being the first word. He also noted that, conceptually, “both marks consist of a phrase or slogan suggesting an action, but not the same type of action”. He stated that:

“the opponent’s mark suggests you let yourself go, or do something untypical, odd, outlandish or even dangerous, which may result in either a negative or positive reaction from others. On the other hand, the applicant’s mark suggests you do something that will make someone happy, which will always be received positively by others”.

Accordingly, the hearing officer held that both of the opponent’s marks shared a very low level of similarity with the mark applied for. He then assessed whether there was any likelihood of confusion and, in doing so, held that the opponent’s marks have a high degree of inherent distinctiveness in respect of the relevant goods for which they are registered, and have also acquired additional distinctiveness through use and promotion.

Nevertheless, putting himself into the shoes of an average consumer of the goods in question, he held that the visual, aural and conceptual differences between the marks are so obvious that a person exercising reasonable care would be unlikely to select goods bearing the mark applied for in place of one bearing either of the opponent’s marks. He stated that the “trademarks do not look or sound sufficiently similar to make direct confusion between them a real likelihood… even allowing for imperfect recollection, confusion is unlikely”.

The hearing officer also dismissed the opponent’s evidence that it had used other phrases containing the word 'random' when advertising its products, in particular the phrase 'random acts of kindness'. He stated that no evidence had been produced by the opponent which would lead him to believe that the phrase 'random acts of kindness' was used by the opponent in a trademark sense in connection with the relevant goods.

Colette Brady, DFMG Solicitors, Dublin