Unilever Plc -v- Controller of Patents Designs & Trade Marks & Anor [2006] IEHC 427 (15 December 2006)

Unilever Plc -v- Controller of Patents Designs & Trade Marks & Anor [2006] IEHC 427 (15 December 2006)

The Court found that Unilever had established substantial prior use and reputation in the 'Sun' mark for dishwasher products, that the 'SunSmile' mark is inherently and confusingly similar due to the dominance of the 'Sun' prefix, and that the Controller erred in law and fact by finding only a low level of similarity and no likelihood of confusion. The evidence showed a real tangible danger of confusion among a substantial number of persons, particularly for household detergents and related goods. The registration of 'SunSmile' for such goods would likely deceive or cause confusion and should be refused.

Citation
[2006] IEHC 427
Parties
Plaintiff: Unilever Plc; First Defendant: Controller of Patents, Designs and Trade Marks; Second Defendant: Sunrider Corporation
Jurisdiction
Ireland
Judgment Date
15 December 2006
Procedural Posture
Appeal by Way of Special Summons Under Trade Marks Act 1963 / High Court Judgment on Appeal From Controller's Decision
Outcome
Appeal allowed; Controller's decision set aside
Legal Topics
Likelihood of Confusion, Trademark Opposition, Distinctiveness of Marks, Family of Marks, Intention to Use
Intellectual Property Trademark Law Likelihood of Confusion Trademark Opposition Distinctiveness of Marks Family of Marks Intention to Use

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Parties

Unilever Plc

Plaintiff

Controller of Patents, Designs and Trade Marks

First Defendant

Sunrider Corporation

Second Defendant

Procedural Posture

Appeal by Way of Special Summons Under Trade Marks Act 1963 / High Court Judgment on Appeal From Controller's Decision

Legal Issues

  1. 1 Whether the registration of 'SunSmile' as a trademark is likely to deceive or cause confusion under sections 19 and 20 of the Trade Marks Act 1963
  2. 2 Whether Unilever's 'Sun' mark and family of marks preclude registration of 'SunSmile' for similar goods
  3. 3 Whether the Controller erred in finding low similarity and no likelihood of confusion

Ratio Decidendi

The Court found that Unilever had established substantial prior use and reputation in the 'Sun' mark for dishwasher products, that the 'SunSmile' mark is inherently and confusingly similar due to the dominance of the 'Sun' prefix, and that the Controller erred in law and fact by finding only a low level of similarity and no likelihood of confusion. The evidence showed a real tangible danger of confusion among a substantial number of persons, particularly for household detergents and related goods. The registration of 'SunSmile' for such goods would likely deceive or cause confusion and should be refused.

Court Disposition

Appeal allowed; Controller's decision set aside

Orders

  • Registration of 'SunSmile' mark in Class 3 for goods overlapping with Unilever's established 'Sun' products refused
  • Matter remitted to Controller for further action consistent with the judgment