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I scream, you scream – we all scream for…milk and milk products?


21st Jul 2014

A recent decision in relation to opposition proceedings before the UK IPO shows the importance of correct classification and of getting the specification right when you file a trade mark application.

On 24 January 2013, Yasar Dondurma Ve Gida Maddeleri Anonim Sirketi (the applicant) applied to register the mark MADO Logo (shown above) in the UK in Classes 29, 30 and 43. Following publication, the application was opposed by Zekeriya Gözcü-Fichtner (the opponent), based on rights claimed in a Community Trade mark (CTM) registration of the word-mark MADO, also in Classes 29, 30 and 43. The opponent’s CTM registration had been on the register for more than five years and the applicant duly put the opponent to proof of use.

The opponent’s CTM was registered for “milk and milk products” in Class 29, for “Bonbons” (a type of sweet/candy) in Class 30 and for services of “Providing of food and drink in cafés and other catering establishments” in Class 43. The opponent did not submit any evidence of use of its mark in relation to “Bonbons” (the only goods specified in Class 30), and although some very limited evidence of use in relation to the Class 43 services was filed, this was held to fall outside the relevant period. The hearing officer also commented that, even if the use shown for the Class 43 services had fallen within the relevant period, the level of use shown (operating a single café in one town in Germany) would be likely to be far too narrow to constitute “genuine use” of a CTM.

This left only the Class 29 portion (ie “milk and milk products”) of the opponent’s CTM registration as a possible ground of opposition. The opponent submitted evidence of use in relation to what the opponent described as “a milk ice cream product…a product which is essentially made of milk since it contains at least 60% by weight of milk…the product is not only made from milk, it also tastes of milk.”

The hearing officer found that use of the opponent’s registered mark had indeed been shown in respect of ice cream. As the hearing officer pointed out, however: “the fundamental problem from the opponent’s perspective is that its earlier mark does not include ice cream in its specification.”

The opponent’s registration covered “milk and milk products” in Class 29. Ice cream and edible ices on the other hand are classified as falling in Class 30, and these had not been included in the Class 30 specification of the opponent’s registration. The opponent was clearly aware of this “fundamental problem”, and had argued in written submissions that:

“The [applicant’s] product is a Maras style dairy ice cream, and it is appreciated that the Nice classification system places the goods ‘ice cream’ in class 30. However, this is just a formal anomaly, and one of several examples in the classification system of potential alternative descriptions for one product type. The opponent’s product is both a ‘milk product’ as well as theoretically an ‘ice cream’, but given that the term ‘ice cream’ includes goods with zero dairy content, it is contended that ‘milk product’ is actually the more suitable description of the opponent’s product, given that it has such a high milk content, and in one variation is actually milk flavoured.”

Unsurprisingly, the applicant strongly denied that use of a mark in relation to ice cream should count as use in respect of “milk and milk products”, arguing that the nature, methods of production and trade channels of ice cream are different from those of milk products.

The hearing officer agreed with the applicant, stating: “The average consumer would describe the product, as the opponent does, as “ice cream”. The term “milk product” is not an ordinary alternative way to describe ice cream. Milk and/or milk products may or may not be ingredients or a flavour of the finished product but do not serve to define the product category”. Even ice cream that was 100% milk/dairy would not, in the view of the hearing officer, be a “milk product” falling in Class 29.

Consequently, no use had been shown for the opponent’s mark in Class 29, or indeed for any of the goods or services for which the opponent’s CTM had been registered, and the opposition failed, with costs awarded against the opponent.

The main lesson to take away from this decision is be certain that your registration is in the correct class and covers the goods/services that are of real interest to you.

Trade mark Decision BL Number: O/303/14
Decision date: 4 July 2014
Hearing officer: Ms A Skilton

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

Author
Catherine Nursaw
Senior Associate
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Would you like to know more? You can talk to Catherine Nursaw who will be able to help. Call +44 (0)20 7242 0901

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