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What a RANDOMS decision

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03/02/2015

Nestlé is the registered proprietor of two Irish trade marks, the word mark RANDOMS and the slogan LET YOUR RANDOM SIDE OUT in respect of confectionery. Unilever applied to register the slogan RANDOM ACTS OF HAPPINESS as an Irish trade mark, also in respect of confectionery.

Nestlé opposed the application on the basis 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.

Unilever argued in response to the opposition that Nestlé’s argument was based on a non-dominant element, namely the word RANDOM, and that the assessment of similarity between the 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 its mark. It also maintained that evidence of use of phrases and slogans containing the word RANDOM was irrelevant when no rights were claimed in those phrases and slogans.

The opposition was refused with the Controller finding that confusion was unlikely. [1] The Controller accepted that the Nestlé marks had a high degree of inherent and acquired distinctiveness and, as noted, the goods covered were identical. Nonetheless, the Controller found that the overall impression created by the marks was “very different”. More specifically, the wording was “very different” and the concept “somewhat different”.

On concept, the Controller found that RANDOMS was an invented term without meaning. He emphasised that the word was RANDOMS rather than RANDOM and that a customer in a sweet shop was asking for different things when asking for a bag of RANDOMS as opposed to a random bag of sweets. Unilever’s RANDOM ACTS OF HAPPINESS referred to a gesture done to make someone happy and was very different from Nestlé’s RANDOMS mark. Accordingly, the Controller found the risk of a likelihood of confusion to be low.

This decision is an interesting one, even if it is one that it is not easy to comprehend quickly. Commentary appears to be divided on whether the Controller made the right decision. Both parties to the litigation have the necessary means to take the matter on through the appellate courts if needs be, so we may not have seen the last of this case.

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[1] Unilever Plc v Société des Produits Nestlé SA