Opponents cannot win based only on earlier registrations

In Buddha Brand Industry Limited v Lloyd Shoes Gmbh, the hearing officer has dismissed an opposition against three applications for marks including the element 'Lloyd'.

On September 28 2010 Buddha Brand Industry Limited applied to register the following three Irish trademarks in Class 25 of the Nice Classification in respect of “clothing, footwear, headgear”:

On advertisement the applications were opposed by Lloyd Shoes GmbH.     

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

The opponent relied in its opposition on its two Irish trademarks for LLOYD (and device) and also its Community trademark for LLOYD (and device), all of which are registered in Class 25.

The hearing officer noted that the opponent had focused its arguments under Section 10(2) of the Irish Trademarks Act 1996. However, before dealing with whether there would be a likelihood of confusion under Section 10(2) of the act, the hearing officer stated that he wanted to address the lack of evidence of any use put forward by the opponent in relation to its marks, which had been registered for more than five years. The hearing officer stated that he was mindful that his conclusions in this regard would set a precedent for future opposition proceedings.

The hearing officer noted that, when an applicant requests proof of the use of a mark (as the applicant had done in its counterstatement), such proof or genuine reasons for the non-use should be provided by the opponent. Whilst the hearing officer noted that the applicant could formally seek revocation of the marks if no evidence of use is provided, he noted that this would significantly delay the proceedings and increase the costs for both sides.

The hearing officer stated that “the more efficient, less costly and ultimately fairer approach is that, when proof of use is requested during opposition proceedings, such proof should be provided”. The hearing officer also noted that the requirement to prove use of the mark is set down in Section 99 of the act wherein it states: “Where, in any civil proceedings under this act, an issue arises as to the use made by any person of any registered trademark, the onus of proving such use shall lie with the proprietor”.

The hearing officer then went on to consider whether there was any likelihood of confusion between the applications and the opponent’s marks under Section 10(2) in case, on appeal, a court found that he had erred in dismissing the opposition because of the lack of evidence of use of the opponent’s marks.

The hearing officer found that there was no likelihood of confusion in this case for a number of reasons. Firstly, the hearing officer noted that the opponent’s marks are “presented in a particular style, which would not go unnoticed by the average consumer”. The hearing officer dismissed the opponent’s argument that consumers may think that the applications refer to different product lines as the hearing officer noted that, in order for that to be the case, consumers would have to think that the opponent had abandoned its long-standing presentation of the marks. Secondly, the hearing officer noted that the opponent had never suggested that it had any other brand other than LLOYD; therefore, consumers would have no experience of any of the opponent’s product ranges bearing more than a single word and accordingly would not be likely to associate LLOYD and LLODY & PRICE. Thirdly, the hearing officer stated that he was satisfied that two names convey a different concept to one name, even where a name is repeated in both marks. The hearing officer said that even allowing for imperfect recollection a consumer would remember that the applications consist of two names. Finally, the hearing officer stated that “consumers see dual marks as brands in their own right, not offshoots from one of the names contained therein”.

Colette Brady, DFMG Solicitors, Dublin