The High Court has rejected Cofresco Frischhalterprodukte GmbH & Co. K.G.’s appeal against the dismissal of its opposition to Reynolds Metals Company’s application to register TUB-ITS as a trade mark. The court found no likelihood of confusion with Cofresco’s earlier TOPPITS mark under the Trade Marks Act 1996.
In a judgment delivered on 14 June 2007, Ms Justice Finlay Geoghegan reheard the opposition on the evidence that had been before the Controller of Patents, Designs and Trade Marks. The Controller had dismissed Cofresco’s opposition in a decision given on 9 November 2006, with written grounds dated 29 November.
The dispute concerned Reynolds’ application, made on 24 October 2001, to register TUB-ITS in Class 21 for “storage containers, not of common metal, for household and kitchen use”. Cofresco relied on its registered TOPPITS Community Trade Mark, which also covered goods in Class 21. The only ground pursued was whether the marks were similar enough, in relation to identical or similar goods, to create a likelihood of confusion.
The judge considered the products to be low-cost household containers typically bought by self-service in supermarkets. She took account of the possibility that buyers would have an imperfect recollection of TOPPITS and would not examine the marks closely. She also considered the marks’ visual, aural and conceptual impressions as a whole.
Although she recognised aural similarities, the judge considered visual and conceptual features more important in the likely purchasing context. Both marks begin with T, have six letters and end in “ITS”, but TOPPITS is one word while TUB-ITS is hyphenated. She found the dominant opening elements, “top” and “tub”, visually distinct and conceptually different. She described TUB-ITS as suggesting items placed in a container, while TOPPITS could be perceived as an invented word or as suggesting a top placed on items.
The judge did not find evidence that TOPPITS had acquired enhanced reputation through use in Ireland. She concluded that Cofresco had not shown a particularly high degree of distinctiveness that would warrant greater protection than ordinarily associated with registration.
The judgment states that Cofresco’s appeal fails. It does not record a final choice between dismissing the appeal and dismissing the underlying opposition: the judge said she would hear counsel on the appropriate order.