No likelihood of confusion between BUTLERS marks

In The Butler’s Pantry (Manufacturing) Limited v The Irish Chocolate Company Limited (June 3 2010), the acting controller has dismissed an opposition against the registration of the mark THE BUTLER’S PANTRY.
The Butler’s Pantry (Manufacturing) Limited applied to register a device mark including the words 'The Butler's Pantry' in Classes 29, 30 and 43 of the Nice Classification. On advertisement, the application was opposed by The Irish Chocolate Company Limited, relying on numerous trademark registrations which included the word 'Butlers'. The opposition was dismissed on the following grounds.
First, while there were differences between the mark applied for and the mark in use, the acting controller was satisfied that the use fell within the definition of 'use'.
Further, the acting controller held that there were limited visual and aural similarities between the marks. Conceptually, the marks were held to have a low level of similarity - the word 'Butlers' in the opponent’s marks referred to a family name, while 'Butler's' in Butler’s Pantry’s mark referred to a male servant. Although there was a low level of similarity between the marks and the goods at issue were identical or similar, the acting controller concluded that the actual level of similarity between the marks fell short of what was required in order to conclude that a likelihood of confusion existed. It was accepted that the opponent’s mark had acquired substantial additional distinctiveness through use and promotion. However, the overall impression created by the marks was very different and it was unlikely that the average person would be confused in the course of a typical purchasing scenario.
There had previously been a dispute between the parties before the Office for Harmonization in the Internal Market (OHIM), with the opponent being successful. The acting controller distinguished the OHIM decision on the basis that:
  • the mark applied for in this instance was not the same mark; and 
  • OHIM had concluded that the word 'the' would not catch the European public’s attention, and that the word 'pantry' would not be attributed any meaning outside the United Kingdom and Ireland. 
In the present case, the acting controller was concerned only with the meaning of these words in an Irish context. OHIM had found that the conflicting signs had a medium level of visual and aural similarity reinforced by a strong conceptual similarity. However, the acting controller was comparing different marks and held that they had a low level of visual and aural similarity, with a little conceptual similarity. The acting controller found that the words 'the' and 'pantry' were important: when viewed or spoken together, they conveyed the precise meaning of a particular place - that is, a pantry, but not any pantry (one in the possession of the butler).
Although the acting controller held that the opponent’s mark enjoyed a reputation in Ireland, it was not of such a greatness as to extend beyond the limited class of consumers of the opponent’s goods and to penetrate the consciousness of a wider public such that a substantial number of people would know and recognize the mark, even if they had never used the opponent’s goods. No evidence or convincing argument had been adduced or addressed as to how Butler’s Pantry’s use of the mark might tarnish the reputation of the opponent’s mark or undermine its capacity to identify exclusively the opponent’s goods. Therefore, there was no evidence that Butler’s Pantry’s mark would result in damage or unfair advantage. Finally, the acting controller did not accept that the opponent had, prior to the relevant date, a protectable goodwill sufficient to be entitled protection under the law of passing off.

Patricia McGovern, DFMG Solicitors, Dublin

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