Tim Cleary

The IPKat has just learned of the recent death of Tim Cleary, Head of Trade Mark Examination in the Patents Office, Ireland. As editor of the European Trade Mark Reports, this member of the blog team has read every word of Tim Cleary's decisions in recent years and has found them succinct, fair and sometimes quietly humorous. One of this writer's favourite passages of Tim Cleary's prose can be found in Newmans Chocolates Ltd v Société des Produits Nestlé, a decision from June 2006 involving the opposition raised by the owner of the MILKY BAR trade mark for confectionery to an application to register MILKBEARS for the same products:
"I have no evidence to suggest that the production of milk chocolate sweets specifically in bear-shapes is a common practice among confectioners such that the average consumer would expect such products to emanate from a number of different sources. Secondly, and more importantly, the word MILKBEARS is not at all a direct and obvious substitute for the descriptive term “bear-shaped milk chocolates”. The word makes no reference to chocolate at all and, to the extent that it refers to other aspects of the relevant goods, it does so by means of a covert allusion that on no account could be regarded as banal or commonplace. It is, in fact, a perfectly distinctive trade mark that evokes a concept of bears composed or milk or, perhaps, bears that like to drink milk. It is essentially a fanciful concept and is certainly sufficiently novel to impress itself upon the mind of the average consumer of the relevant goods in a lasting manner. I have no doubt but that the average consumer who was once exposed to the trade mark MILKBEARS, even if used in relation to bear-shaped milk chocolates, would readily recognise the mark on a subsequent occasion of purchase and rely on it to know that the goods so marked were one and the same as those that he had previously seen offered for sale under that name".
And later that year, in Reynolds Metals Company v Cofresco Frischalteprodukte GmbH & Co. KG, an opposition tussle between the earlier mark TOPPITs and the applicant's TUB-ITS, each for storage containers, he produced this little aside:
" ... the striking thing about TUB-ITS is not the look or the sound of it but the economic use of language to tell the consumer that the product so marked is a multi-pack of general purpose storage containers. That message is delivered in a flash and quite unmistakeably, in my opinion. It may be going too far to describe it as zen-like but it is certainly a clever little trade mark!"
The IPKat will miss him.
Tim Cleary Tim Cleary Reviewed by Jeremy on 15:09:00 Rating: 5

1 comment:

Dr. Michael Factor said...

I did not know Mr Cleary, but the chocolate bear remark reminds me of a welcome remark in a similar case in Israel, where in a decision rejecting a challenge to Milka's cow by Elite, Israel's largest confectioner and manufacturer of the Cow brand of chocolate, the commissioner of patents wittily ruled that the trademark register is sufficiently verdent to allow both cows to graze in peaceful coexistence.

See http://blog.ipfactor.co.il/2006/04/15/elite-and-milkas-cows-lock-horns/ for pictures of the two cows and more details.

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