Can't stoppit, Toppits!

Glen Gibbons was first to send the IPKat a link to a decision from the Irish High Court last month but which only recently seems to have surfaced as a web link. The decision, Cofresco Frischalteprodukte GmbH & Co KG v Controller of Patents, Designs and Trade Marks; Reynolds Metals Company [2007] IEHC 187, was delivered by Mrs Justice Finlay Geoghegan on 14 June 2007.

Reynolds applied to register as a trade mark the word TUB-ITS for “storage containers, not of common metal, for household and kitchen use” (Class 21). Cofresco opposed, citing its earlier Community trade mark registration of the TOPPITS logo for identical and similar goods. The main ground of opposition - one of many, it seems - was likelihood of confusion, by virtue of similarity of the marks and identity/similarity of goods.

The Irish Patents Office rejected the opposition: in the first place any likelihood of confusion was reduced by the fact that the average consumer was likely to pay at least as much attention to functional considerations as he would to brand names when purchasing plastic kitchen and household containers. As to the marks, Cofresco's was defined by its look and sound and its lack of meaning, while the dominant aspect of Reynolds' mark was its meaning (“put it in a tub”). In any event the distinctiveness of Cofresco's mark stemmed from bits of it that were different from those which rendered Reynolds' mark distinctive, so they consequently did not contribute to a likelihood of confusion. Cofresco appealed.

Mrs Justice Finlay-Geoghegan dismissed the appeal, but not before she rapped the hearing officer on the knuckles. She said (among other things):
* where goods are sold to the general public for domestic use, a judge can bring his or her own experience and common sense as a potential purchaser to bear in assessing the likelihood of deception and in determining the probable purchasing scenario of the goods in question in which the likelihood of deception must be determined.

* In this case no very careful or in-depth examination of the relevant trade marks would be made in the purchase of the goods concerned by consumers, who may not have both products before them at the time of making the purchase decision and with only an imperfect picture of the respective marks in his mind.

* the hearing officer was wrong to discount the likelihood of confusion by reason of his view that the average consumer would be likely to pay at least as much attention to functional considerations as he would to brand names in choosing plastic kitchen and household storage containers.

* While there was some aural similarity, the two marks were insufficiently similar to induce confusion. A contrary finding by the Rechtbank’s-Gravenhage (District Court of the Hague, The Netherlands) last year in a similar dispute might be explained by linguistic differences between Dutch and Irish English-speakers as well as by the fact that evidence of the earlier mark’s large degree of distinctiveness that was accepted before the Dutch court was not put before the court in Ireland.
The IPKat has been pondering over the learned judge's view that the hearing officer was wrong to say that the average consumer would be likely to pay at least as much attention to functional considerations as he would to brand names in choosing plastic kitchen and household storage containers. This is probably true with regard to word marks and logos, but can the same be said of trade marks consisting of product shapes or their containers or packaging, where the marks under comparison may have a functional element. Merpel says, if I were ordering these containers over the phone, I'm not sure I'd be so sure I could confidently tell TOPPITS from TUB-ITS. But then I'm just a fictional cat, not an average consumer.

Right: plastic containers and their friends as art - a lovely conception by Jessica Stockholder

Kats' chorus: why in Irish oppositions do opponents still persist in raising every ground of opposition known to man, when they only seriously argue one or two of them? Surely this contributes to global warming and should be stopped now.

Toppits you can eat here; Toppits you can't eat here
Tub-its here
Tebbits here
Can't stoppit, Toppits! Can't stoppit, Toppits! Reviewed by Jeremy on Sunday, July 22, 2007 Rating: 5


  1. That looks fair. 'Tub' to an English speaker is descriptive but for someone whose second language is English it may have more distinctive quality. Remember "House of Donuts" ?

    All this business about inattentive purchases etc :"bag of sweets" cases we call them in the UK. I've personally never been persuaded that buying sweets is an inattentive purchase (as the theory supposes)- I always make damn sure I don't get the liqourice ! Anyway, I reckon this business of inattentive purchasing is a bit of a TM fiction to get the right result.

    Finally Jeremy, I would look closer to home before blaming the Irish for kitchen sink pleadings. Any lawyer worth their salt will plead the kitchin sink in trade marks - to hell with global warming !

  2. In defence of the UK trade mark profession, they're a lot better about this than they were a decade or so ago and the grounds of opposition/invalidity are now generally sparingly and carefully selected.

    But in pretty well every single Irish case we have to read through a tedious litany of grounds that everyone knows are never going to be substantiated and argued. Its not as if it has any redeeming literary merit. Why not just cut it out?


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