SUNSHINE JUICE squeezed out in opposition action

In Sunshine Juice Limited v Kiely's (Western Distributors) Limited, a hearing officer at the Irish Trademarks Office has refused registration of the device mark SUNSHINE JUICE on the basis that it is confusingly similar to the prior word mark SUNSHINE for identical products.

Sunshine Juice Limited applied to register a series of trademarks for goods in Class 32. The series consisted of five device marks which included the words 'SUNSHINE JUICE'. The application was opposed by Kiely's (Western Distributors) Limited relying on its prior registration for the mark SUNSHINE in Class 32. Sunshine Juice alleged that none of its products are made from concentrated fruit juices, but rather consist of freshly squeezed juices and smoothies, sold predominantly to juice bars. Kiely's objections were based on:

• Section 8(3)(b) of the Trademarks Act 1996 (is the mark of such a nature as to deceive?);
  
  
• Section 10(1) (are the respective trademarks and the respective goods identical?); and
  
  
• Section 10(2) (is there a likelihood of confusion on the part of the public?).

In relation to the objection under Section 8(3)(b), the hearing officer found that the Notice of Opposition contained only an objection under Section 8 in general and the introduction of a ground of opposition based on Section 8(3)(b) would constitute a material alteration of the Notice of Opposition. Therefore, he found that Kiely's was not entitled to object to the application on this basis. Even if he was wrong on this and the objection under Section 8(3)(b) was validly raised, he was still of the view that the objection should not succeed. Among other things, the hearing officer held that, taken as a whole, the term SUNSHINE JUICE cannot be said to designate the nature of the relevant goods in a descriptive manner.

With regard to the objection under Section 10(1), the hearing officer held that the respective goods are identical. In relation to the identity of the marks at issue, he was of the view that, in the context of the relevant goods, the inclusion of the word 'JUICE' may well go unnoticed by the average consumer, in the sense that the average consumer is likely to subconsciously ignore or "filter out" that word when perceiving the brand name of the goods bearing Sunshine Juice's mark. However, he did not agree that the same can be said of the figurative element of Sunshine Juice's mark. He indicated that the device is a significant feature of the mark that could not be expected to be overlooked by the average consumer. Therefore, he came to the conclusion that Sunshine Juice's mark may not be regarded as identical with Kiely's earlier trademark and the prohibition on registration contained in Section 10(1) could not be relied upon.

Finally, the hearing officer considered the objection under Section 10(2). He held that although the respective marks are not identical, there can be no doubt that they are highly similar and therefore the marks are effectively identical from a connotative aspect. He believed that the eye of the average consumer would be drawn to the words contained in Sunshine Juice's mark and that the device element is of secondary significance notwithstanding its prominence in the mark. He went on to conclude that there was a strong likelihood of confusion and that the application for registration must therefore be refused under Section 10(2) of the act. In his view, the fact that the word SUNSHINE is the distinctive feature of both marks was decisive in obviating the visual difference between them, particularly having regard to the nature of the goods and the fact that the brand name is the principal criterion upon which the average consumer identifies and distinguishes between the products of different undertakings.

Patricia McGovern, P McGovern & Co Solicitors, Dublin