The High Court allowed Unilever plc’s appeal against a decision permitting Sunrider Corporation’s “SunSmile” trade mark application to proceed to registration. Mr Justice T.C. Smyth found that the marks created a risk of confusion, particularly for household detergents, given Unilever’s established “Sun” mark and related product names.
Sunrider applied in 1995 to register “SunSmile” and a device in Class 3. The application covered a wide range of goods, including personal care products and household cleaning preparations. Unilever opposed it, relying on its registered marks and use of “Sun” for dishwasher products. The Controller dismissed the opposition in 2004. On appeal, Unilever challenged, among other things, the finding that the marks had only a low level of similarity and that use of SunSmile for dishwasher detergent would not cause confusion.
The judge found that Unilever had used “Sun” in Ireland before Sunrider’s application and had built a substantial reputation in the mark. He accepted evidence that Unilever’s dishwasher products, including detergent, salt, rinse, cleaner and deodoriser, were established in the market as referable to Unilever. The court also accepted that the evidence and exhibits supported use of a family of “Sun” product names.
The judgment said the shared “Sun” element was important to the comparison. The judge found the marks substantially and confusingly similar, and concluded that the Controller had erred in finding otherwise. He also considered the everyday nature of household detergents, for which consumers were unlikely to examine marks with the same care they might give to some personal care products.
The judgment recorded Unilever’s submission that Sunrider sought to include non-personal goods to take advantage of Unilever’s reputation, and said the judge accepted that submission in the circumstances of the evidence. The court’s confusion analysis addressed the Class 3 goods and surrounding evidence; it did not treat every personal care item as equivalent to household detergents.
The judgment goes on to consider whether an applicant must have a present and definite intention to use a mark when applying for registration. The supplied text ends during that discussion and does not include the court’s final order or the conclusion of the judgment. The precise extent of the relief granted, including how the application was to proceed, is therefore not stated in the available source.