Owner of LURPAK fails to prevent registration of DANPAK

In Lidl Stiftung & Co KG v Mejeriforeningen Danish Dairy Board (September 5 2008), the acting controller has dismissed an opposition against the registration of the trademark DANPAK.
Lidl Stiftung & Co KG applied to register the mark DANPAK for goods in Class 29 of the Nice ClassificationMejeriforeningen Danish Dairy Board, the owner of various marks containing the word 'lurpak', opposed the application on several grounds.
First, the Dairy Board argued that 'Danpak' signified no more than 'Danish pack' (ie, packaged goods of Danish origin). Therefore, the mark DANPAK:
  • was not capable of distinguishing the goods of a single undertaking;
  • was devoid of any distinctive character; and
  • merely designated characteristics of the products in question. 
However, as the Dairy Board offered no evidence in support of these assertions, the acting controller did not agree that the mark DANPAK was descriptive of goods of Danish origin and would be perceived in that way by the average consumer.
The Dairy Board also argued that the mark would be deceptive if used on products of non-Danish origin (based on its assertion that the mark DANPAK would be understood as indicating that the goods in relation to which it is to be used are of Danish origin). Lidl's application was not limited to goods of Danish origin. The acting controller rejected this argument, as he did not accept that DANPAK connoted Danish origin or would be taken to have that meaning by the average consumer. 
The Dairy Board also alleged bad faith, but did not particularize the charge. Because the Dairy Board did not give any details of the basis for the charge in the notice of opposition and filed no evidence tending to support it subsequently, the acting controller was of the view that the Dairy Board had not shifted the onus of proof of disproving the charge onto Lidl. It was not open to the Dairy Board to seek to particularize and substantiate it through argument at the hearing.
Finally, the acting controller held that there was no likelihood of confusion between the Dairy Board's trademarks and Lidl's mark. In addition, he did not accept that consumers who knew of the trademark LURPAK used in relation to high-quality dairy produce from Denmark would interpret the use of the DANPAK mark on dairy products as imparting a reference both to that mark and the origin of the goods marketed under it. He also pointed out that Section 10(2)(b) of the Trademarks Act 1996 prohibits the registration of a trademark which is confusingly similar to an earlier trademark. Therefore, the prohibition does not apply to the alleged similarity between the mark under consideration and elements of several marks. Consequently, the comparison of the respective marks had to be undertaken by reference to Lidl’s mark and each of the Dairy Board's marks individually.
Based on that comparison, the acting controller found that there was insufficient similarity on which to infer any likelihood of confusion. In addition, the acting controller was not persuaded that LURPAK would have been associated in Ireland with Denmark and Danishness as at the relevant date. However, even if this was the case, the acting controller would still not uphold the Dairy Board's objection as he did not think that Lidl’s use of the mark DANPAK in relation to the goods covered by the application would cause any damage to the Dairy Board.
The controller thus dismissed the opposition.
Patricia McGovern, DFMG Solicitors, Dublin

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