In Seán Walsh (the “Applicant”) v Superquinn Limited (the “Opponent”), the Hearing Officer acting for the Controller of the Irish Patents Office upheld two oppositions to two Irish trade mark applications for SEÁN’S BROWN BREAD and SEÁN’S BROWN (collectively the “Marks”) in Class 30 in respect of brown bread. The Opponent had been marketing similar products under the title SÉAN’S BROWN for a number of years.

The Hearing Officer upheld the oppositions on the basis of section 10(4)(a) of the Irish Trade Marks Act 1996 (the “Act”). Section 10(4)(a) of the Act provides that a trade mark may be refused protection on the basis of earlier unregistered rights.

The Hearing Officer noted that the test applicable under section 10(4)(a) of the Act is whether, at the date of application, normal and fair use of the mark applied for in relation to the relevant goods could have been prevented under the law of passing off.

Applying the three stage test set down in Jif Lemon  the Hearing Officer held as follows:

Goodwill

The Hearing Officer accepted that the Opponent had been using the trade mark SEAN’S BROWN in connection with bread and bread products since 1996 and that the Opponent had earned a significant reputation in its SEÁN’S BROWN mark at the date of application for the Marks.

Whilst the Hearing Officer accepted that the Applicant had produced bread products for many years and had traded under many different names (all containing the name Sean), he stated that “the issue at stake here is not whether the Applicant has goodwill in his own business but whether, if he were to use the disputed mark in a normal and fair manner, he would damage the Opponent’s goodwill”.

Further, the Hearing Officer found that the Applicant had not adduced any evidence that he had been using the Marks prior to the adoption by the Opponent of its SEAN’S BROWN mark in 1996.

Misrepresentation

The Hearing Officer noted that the presence or absence of confusion or the likelihood of confusion occurring is a moot point and is not a factor to be borne in mind in an opposition grounded on the law of passing off. He stated that “it is settled case law that a distinction can be drawn between misrepresentation and confusion……confusion does not prove misrepresentation”.

The Hearing Officer held that if the Applicant was to sell bread under the Marks in any of the locations where the Opponent has established a reputation, it is “self evident” that consumers would make a connection in trade between the Opponent and the goods sold under the Marks. “Consumers would, on the balance of probability, select the product in question on the basis that they are purchasing the product known to them that possesses the characteristics (e.g. ingredients, flavour, craftsmanship, freshness) for which the Opponent has earned a reputation. The creation of such a connection would be as a result of an unintentional misrepresentation on the part of the Applicant that the law of passing off seeks to avoid.”

Damage

In relation to damage the Hearing Officer listed a number of scenarios which, in his view, could cause damage to the Opponent’s goodwill and reputation. These included “the possibility of consumers unwittingly giving their business to a competitor, or the sale of bread at prices significantly lower than those charged by the Opponent or the use of different ingredients that could cause customers to believe the Opponent has changed its recipe”.