Randoms, leggy chicks and youth culture: ice cream opposition meltdown in Ireland

So many decisions on trade marks emanate from the Community trade mark system and from the major national jurisdictions in Europe that it is occasionally easy to miss one. It's only now that this Kat has caught up with Unilever Plc v Société des Produits Nestlé SA, a decision of Dermot Doyle, on behalf of the Controller of the Irish Patents Office which dates back to 12 September. You can read it in full here.

In short, Unilever applied to register the slogan RANDOM ACTS OF HAPPINESS as an Irish trade mark for ice-cream, water ices and frozen confections (Class 30). Nestlé opposed, citing its earlier word mark RANDOMS and the slogan LET YOUR RANDOM SIDE OUT which, by sheer coincidence, happened to be registered for precisely the same goods, as well as its use of other phrases and slogans that featured the word "random". The opposition, in true Irish fashion, was initially based on both absolute and relative grounds, though by the time Dermot Doyle came to deal with it the only surviving ground of opposition was that, on account of the similarity of the marks and the identical nature of the goods, there was a likelihood of confusion of relevant consumers, including a likelihood that they would associate Unilever's products with those of Nestlé under section 10(2)(b) of the Irish Trade Marks Act 1996.

Unilever resisted the opposition, arguing that the opposition was based on a non-dominant element (ie the word RANDOM) of the sign applied for and that the assessment of similarity between composite marks could only be carried out on the basis of an overall impression conveyed to the relevant public, taking into account the significance of the dominant element of the applicant's mark. Further, said Unilever, evidence of use of phrases and slogans incorporating the term RANDOM by Nestlé was irrelevant when no rights were claimed in those phrases and slogans.

Mr Doyle dismissed the opposition and allowed the mark to proceed to registration. After summarising the Court of Justice of the European Union's guidance on how to compare marks and establish the existence of a likelihood of confusion, he concluded here that confusion was unlikely. Although the goods covered by the application were identical and the earlier marks had a high degree of inherent and acquired distinctiveness, the overall impression created by the marks was very different. There was therefore an insufficient basis upon which to conclude that a likelihood of confusion existed.

This Kat was fascinated by the analysis of the issue of conceptual similarity (or its absence), where Mr Doyle said:

34. Conceptually, the Opponent’s RANDOMS mark is an invented term that has no meaning. In its evidence and argument the Opponent emphasised that each of the respective marks contains the word RANDOM, but that is not strictly true. The Opponent’s mark is RANDOMS not RANDOM. Asking a shopkeeper for a bag of RANDOMS sweets is not the same as asking for a random bag of sweets [true, but is not a more appropriate comparison one which would be made between asking for "a bag of RANDOMs sweets" and "a bag of random sweets"?].

35. The word random is not a noun and as such it is neither singular nor plural. It is, however, a play on the adjective “random” that describes something that is selected by chance, chosen arbitrarily or happens unexpectedly, but I am satisfied that anyone encountering the Opponent’s RANDOMS mark will make a link with the word random. In its written submissions the Opponent provides background to the adoption of the mark, explaining that it is based on current youth culture use of the term “random” [on which see eg here] and to reflect a characteristic of the contents of the packet of sweets bearing the mark. This is a reasonable explanation of the origin of the Opponent’s mark when used for confectionary and the like. However, this explanation cannot hold true for all goods for which the Opponent’s mark is registered. It begs the question as to why the mark is registered for a multitude of goods including, inter alia, meat, poultry, game, fish and seafood, which are hardly items targeted at the youth population or capable of being produced with random characteristics [wonders the IPKat, is this another example of a situation in which it is more prudent to prune the list of goods for which registration is sought? Merpel isn't sure: she thinks that, the less a reason exists for selecting a word as a trade mark in respect of goods, the more deserving it is of being regarded as distinctive]. (Perhaps the Opponent had bona fide intentions of trading in chickens with random numbers of legs, which might appeal to families whose members all like a leg).

36. The Applicant’s RANDOM ACTS OF HAPPINESS has clear meaning and refers to a gesture done in order to make someone happy. I find there is a very negligible level of conceptual similarity between the Opponent’s RANDOMS mark and the Applicant’s RANDOM ACTS OF HAPPINESS mark. I am satisfied that the overall level of similarity between the marks is very low.

This Kat, being aware of the tendency of youth to abbreviate names, brands, slogans and almost everything else they can shorten, would not have been surprised to learn that, faced with the challenge of requesting confectionery products or ice creams for themselves and their friends,, would have no compunction about shortening "Can I have half a dozen RANDOM ACTS OF HAPPINESS please?" to something like "Can I have half a dozen RANDOMS?" But that's another matter.