In Cuisine Express Fresh Foods Limited v Cuisine de France Limited, the acting controller has dismissed the opposition filed by Cuisine de France Limited against the registration of the trademark CUISINE EXPRESS.

Cuisine Express Fresh Foods Limited applied to register the mark CUISINE EXPRESS for various goods and services in Classes 29, 30, 31, 32 and 44 of the Nice Classification (Registration 222969). The mark was opposed by Cuisine de France on both absolute grounds and relative grounds.

The acting controller was not persuaded that the mark was open to objection merely because the words of which it is composed are synonyms for 'food' and 'fast', respectively. He also rejected the suggestion that BABY-DRY (C-383/99 P) had become bad law and had effectively been reversed by DOUBLE-MINT (T-193/99) and BIOMILD (C-265/00). He held that the concept - first expounded in BABY-DRY - of any perceptible difference between the combination of words forming a trademark and the terms used or understood by the relevant consumers to designate goods or services or their essential characteristics was reiterated and reinforced in later cases.

The acting controller was of the view that CUISINE EXPRESS is a sufficiently unusual word combination to be regarded as a distinctive trademark and be eligible for registration as such. It evokes the notion of a food train (as in Orient Express or Midnight Express), which is a fanciful concept. According to the acting controller, CUISINE EXPRESS is not a word combination that must be left free for use by all undertakings in the fast-food business, and its registration as a trademark would not act as an impediment to the free conduct of trade in the goods and services covered by the application for registration.

The objection on relative grounds was based on Cuisine de France's trademark CUISINE DE FRANCE. The acting controller considered that the goods covered by both marks are normally selected as self-serve items rather than asked for by brand name. Therefore, the visual and conceptual comparisons of the respective marks were more significant than the aural comparison in the assessment of the likelihood of confusion.

The acting controller concluded that there was no likelihood of confusion on the part of consumers between bakery items marked under the names CUISINE DE FRANCE and CUISINE EXPRESS. The overall visual and conceptual impressions formed by these two marks were quite different, notwithstanding the fact that 'cuisine' is the first word in each. On a visual comparison, the fact that both marks commence with the word 'cuisine' is counterbalanced by the clear visual differences between 'de France' and 'express'.

The acting controller also took the view that any reputation built up by Cuisine de France under its trademark CUISINE DE FRANCE was attaching to the mark in its entirety and not just to the component CUISINE. The indivisible character of the trademark CUISINE DE FRANCE made it unlikely that the average person would assume that CUISINE EXPRESS was a new range or line of products under the CUISINE DE FRANCE brand. The acting controller thus held there was no appreciable likelihood of either direct or indirect confusion on the part of consumers if the trademark CUISINE EXPRESS was used in relation to bakery products, notwithstanding Cuisine de France's prior use of the CUISINE DE FRANCE mark in relation to those goods.

Patricia McGovern, DFMG Solicitors, Dublin

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