Readers of this weblog should now be familiar with the name of T.M.R. Restaurants Limited's application; opposition by Société Anonyme Des Bains De Mer Et Du Cercle Des Etrangers, the recent (9 May) Irish Patents Office decision of Dermot Doyle (acting for the Controller) which was the subject of a fairly grumpy post from this Kat yesterday evening on the subject of time-wasting grounds of opposition. Now for a look at the substantive legal issues.
- consisted exclusively of signs or indications which may designate characteristics of the goods,
- consisted of signs or indications that have become customary in the trade,
- was of such a nature as to deceive,
- was such that its use was prohibited by enactment or rule of law,
- was based on an application for registration that was made in bad faith,
- caused a likelihood of confusion on the part of the public, and likelihood of association with the opponent’s trade marks
- if used, would take unfair advantage of, or be detrimental to, distinctive character or reputation of the opponent’s mark,
- was such that its use was liable to be prevented by virtue of any rule of law protecting an unregistered trade mark or other sign,
- could not stand against the opponent’s marks, since the latter were earlier marks that were entitled to protection under the Paris Convention as well-known trade marks,
- was neither used nor intended to be used in relation to goods covered by the application.
- was based on an application that has not met the requirements for registration.
Hearing Officer Dermot Doyle dismissed the opposition on all grounds.
Some of the grounds were easy to deal with. In particular, Mr Doyle observed, the mere fact that the opponent’s marks were earlier than the mark applied for was not a ground of opposition and the words “The Monte Carlo”, together with the fanciful figurative element of the fish, dressed in chef’s hat holding a frying pan, and the blue circle background, could be considered to fall within the scope of “signs and designations that must remain open to be used by all traders of the goods and services for which protection is sought”. Further, while the words “Traditional Fish & Chips” were indeed customary in the trade, the words “The Monte Carlo”, the figurative element of the fish using a frying pan and the blue circle background could not realistically be considered to be so. Also, while pretty well every Irish consumer would have heard of Monte Carlo, there was no suggestion, let alone evidence, that they would have imagined it to be a trade mark rather than the name of a place.
Comparing the respective marks, there was some small similarity in so far as both contained the words "Monte Carlo", but that was about as far as it went -- and there was no evidence in any event that the opponent's mark was a mark with a reputation among the good folk of Ireland. The marks, taken as a whole, were dissimilar, would not be confused and the use by one could not be seen to be a tarnishing of the reputation of the other or an unjustified riding on its coat-tails.
Taking a leaf out of the Book of Reality, a work to which presumably neither the opponent nor its professional representatives had opportunity to refer, Mr Doyle added this:
"52. On the one hand we have a chipper, selling traditional fish and chips and the like, and on the other, an undertaking running luxury resorts, comprising casinos and high-quality hotels, restaurants and spas; both of whom are using the term MONTE CARLO in their trade marks. The respective undertakings are not, in any way, competing with one another. The issue rests on whether it is likely that a consumer, who must be assumed to be already familiar with the goods and services sold under the Opponent’s earlier trade marks, being exposed in a typical purchasing scenario to the goods or services bearing the mark applied for, is likely to be confused. Would he seriously entertain the thought that the goods or services he is purchasing are connected in some way with those goods or services that he has known previously under the Opponent’s marks? Or on encountering the Applicant’s mark would he be likely to attempt to order Caviar, Foie Gras, Filet Mignon and Crème Brûlée, to be washed down with a bottle of 2005 Chambertin Grand Cru, as he might have done when in one of the Opponent’s establishments? In my opinion, there is no possibility that consumers would believe that the respective parties are linked economically in any way. Because of the differences in the respective marks, the different types of consumer of the respective marks, the extremely different purchasing scenarios under which the consumer is likely to encounter them and the fact that the parties are not in competition with one another, I think that these questions must be answered in the negative".This Kat has recently taken a great and active interest in coexistence agreements on behalf of MARQUES, the organisation for European trade marks, and has been involved in the setting up and running of two highly successful experimental workshops on negotiating coexistence agreements and prior rights agreements which took place last month in Rotterdam and Munich respectively. In his view, this dispute could have been settled swiftly and effectively, and far, far more cheaply, if the parties had negotiated a sensible coexistence settlement as soon as T.M.R.'s application became known to the opponent, rather than letting this nasty opposition fester for over four years before it predictably hit the buffers.
Merpel adds, is it any coincidence that MARQUES's annual meeting this year takes place in, er, Monte Carlo?
Catfish here and here
Monte Carlo or Bust here