No confusion between TOPPITS and TUB-ITS


In Reynolds Metals Company v Cofresco Frischalteprodukte GmbH & Co KG, a hearing officer at the Irish Trademarks Registry has dismissed an opposition against the registration of the mark TUB-ITS for goods in Class 21 of the Nice Classification.

Reynolds Metals Company applied to register TUB-ITS in respect of "storage containers, not of common metal, for household and kitchen use". The application was opposed by Cofresco Frishchalteprodukte GmbH & Co KG in reliance on its Community trademark TOPPITS (and device). The opposition was based on Section 10(2)(b) of the Trademarks Act 1996, namely similar trademarks for identical/similar goods and the likelihood of confusion/association.

The hearing officer confirmed that likelihood of confusion must be assessed globally, taking account of all of the circumstances of the case. Regard must be had to the visual, aural and conceptual similarities between the marks, and one must look at the overall impression created by the respective marks as the average consumer normally perceives a trademark as a whole and does not proceed to analyze its individual components or details.

The hearing officer concluded that Reynolds Metals' case should prevail and the opposition should be dismissed. In his view, the goods concerned were low cost plastic boxes or tubs for general household or kitchen use. Such products are purchased as required for specific purposes and, in selecting them, it is unlikely that the average consumer would be especially brand aware. Trademarks would play a relatively lesser role in the selection of these goods by the average consumer than in the case of many other consumer goods. The average consumer would be likely to pay at least as much attention to functional considerations as he would to brand names in choosing plastic kitchen and household storage containers, and the likelihood of confusion arising as a result of the simultaneous use of similar trademarks by unrelated undertakings was somewhat reduced accordingly.

He also did not consider that the marks could be said to be similar to each other. TOPPITS is a meaningless invented word and its distinctiveness as a trademark stems from its lack of meaning. TUB-ITS is clearly a conjoining of two dictionary words (ie, 'tub' and 'its') and the intended meaning of the mark TUB-ITS (ie, 'put it in a tub') would be immediately apparent to the average person, notwithstanding the unusual syntactic composition. The distinctive feature of Reynolds Metals' mark is the message it conveys or, more particularly, the linguistic novelty employed to convey the message. Cofresco's mark is defined by its look and sound and its lack of meaning while the dominant aspect of Reynolds Metals' mark is its meaning and how the meaning is conveyed.

Notwithstanding its similar sound and appearance to Cofresco's mark, in the hearing officer's view, it was unlikely that the impression created in the mind of the average person by Reynolds Metals' mark would have the effect of bringing to mind the TOPPITS mark. Accordingly, there was no likelihood of confusion on the part of the public and therefore the opposition under Section 10(2)(b) was dismissed.

Patricia McGovern, P McGovern & Co Solicitors, Dublin

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