Silver Pail Dairy fails to assert reputation in TWISTCUP

In Dale Farm Limited v Silver Pail Dairy (Ireland) Limited, the controller has dismissed Silver Pail Dairy (Ireland) Limited's opposition against Dale Farm Limited's application for the registration of the mark TWISTCUP.
Dale Farm applied to register a series of marks consisting of the word 'twistcup' for goods in Class 30 of the Nice Classification. The application was opposed by Silver Pail. The only grounds of opposition maintained at the hearing were those under Sections 8(1)(c), 8(1)(d) and 10(4)(a) of the Trademarks Act 1996 - namely:
  • the name Twistcup designated certain characteristics of the goods covered by the application;
  • the name had become the customary name in the trade for those goods; and
  • because of Silver Pail’s prior use of the name Twistcup in relation to similar goods, use of the name by Dale Farm was liable to be prevented through an action for passing off. 
The controller held that the word 'twistcup' did not simply name, in ordinary language, the characteristics of appearance, shape and manner of packaging of the goods in question. Rather, it was an invented word that was grammatically unorthodox and was not susceptible to a single obvious interpretation. Therefore, the mark TWISTCUP:
  • did not fall within the sphere of descriptive words that should be kept free for use by all commercial undertakings dealing with those goods; and
  • was not excluded from registration. 
From the evidence presented by Silver Pail to the controller, it appeared that there had been four different undertakings involved in the sale of an ice-cream product under the name Twist Cup or Twistcup at various times over the past 20 years or so. The undertakings had used the name as a trademark rather than as a generic product indicator. The controller found the evidence adduced by Silver Pail to be insufficient to support its opposition against the application for registration. The evidence did not demonstrate sustained use of the name by undertakings other than Dale Farm in any appreciable volume and continuing up to the relevant date. It also did not contain any statements from persons in the trade attesting to the fact that the name had become established in the trade, nor were there any exhibits showing references to the name used as anything other than a trademark. Consequently, the controller held that:
  • the mark TWISTCUP had not become customary in the current language; and
  • use of the name Twistcup was not an established practice of the trade at the time of filing of the application.
In addition, the controller held that Silver Pail’s evidence was insufficient to suggest that it enjoyed a goodwill or reputation in goods bearing the name Twistcup as of the relevant date. The evidence as to Silver Pail’s own trading in goods bearing the name was vague and contradictory. Moreover, it appeared that:
  • any use of the name by Silver Pail that may have occurred in the 1980s or 1990s was suspended for a significant period; and
  • Silver Pail recommenced use of the name on a small scale less than a year prior to the relevant date. 
The controller gave weight to Dale Farm’s evidence to the effect that it had used the trademark TWISTCUP continuously since 1990. Moreover, the volume of sales that Dale Farm claimed to have achieved in the first five years immediately preceding the relevant date was vastly greater than that claimed by Silver Pail. Therefore, the controller did not accept that Silver Pail could assert a reputation in the trademark as of the relevant date such that it could be said that use of the mark by Dale Farm would mislead consumers and cause damage to Silver Pail. Consequently, the controller held that use of the name by Dale Farm was not liable to be prevented by Silver Pail through an action for passing off. The opposition was thus dismissed.
Patricia McGovern, DFMG Solicitors, Dublin

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