Pic Nic Picnic

TRADE MARKS ACT 1994 IN THE MATTER OF INTERNATIONAL REGISTRATION NO. 1304281 DESIGNATING THE UK FOR THE MARK: IN THE NAME OF ROOFOODS INTERNATIONAL FOR GOODS IN CLASS 30 AND IN THE MATTER OF OPPOSITION THERETO UNDER NO. 408847 BY CADBURY UK LIMITED 1 BACKGROUND AND PLEADINGS 1) International Registration No. 1304281 was registered with designation of the UK on 10 March 2016 by ROOFOODS INTERNATIONAL (“the Applicant”) for the following mark (“the opposed mark”) PIC NIC The opposed mark was designated for goods in Class 30, and the specification now stands as follows1: Cookies, waffles, cupcakes and biscuits (other than chocolate confectionery and chocolate coated confectionery). The opposed mark was published in the Trade Marks Journal on 20 January 2017. 2) The application is opposed by Cadbury UK Limited (“the Opponent”) under sections 5(2)(a), 5(2)(b) and 5(3) of the Trade Marks Act 1994 (“the Act”), for the purposes of which it relies upon UK trade mark registration no. 1035984, which was applied for on 30 September 1974 and completed its registration process on 30 September 1974, for the following mark and goods in Class 30: PICNIC Non-medicated chocolate confectionery. 3) The significance of the above dates is that (1) the Opponent’s mark (“the earlier mark”) constitutes an earlier mark in accordance with section 6 of the Act, and (2) it is subject to the proof of use conditions contained in section 6A of the Act, its registration procedure having been completed before the start of the period of 5 years ending with 1 The specification was originally for “cookies, waffles, cupcakes and biscuits” but, as noted in paragraph 28 below, during the course of these proceedings the Applicant decided to limit the specification by addition of the words “(other than chocolate confectionery and chocolate coated confectionery)”, this restricted specification having been confirmed by WIPO. 2 the date of publication of the contested designation. The Applicant has required the Opponent to furnish proof of genuine use during this period (“the relevant period”). 4) The Opponent claims under sections 5(2)(a) and 5(2)(b) of the Act that the mark applied for is identical or similar to the earlier mark and that the goods of the competing marks are identical or similar, so that there is a likelihood of confusion. It also claims under section 5(3): that the earlier mark has a reputation; that the similarity between the earlier mark and the opposed mark is such that the relevant public will believe that they are used by the same or related undertakings; that the opposed mark will give the Applicant an unfair advantage in being able to “free ride” on the investment in promotion and advertising undertaken by the Opponent; that if goods supplied under the opposed mark are of poor quality they will tarnish the earlier mark’s reputation should consumers believe there is an association between the proprietors of the marks; and that use of the opposed mark will lead to dilution, i.e. undermining, weakening, blurring and eroding of the distinctive character of the earlier mark. In its counterstatement the Applicant denies the grounds of opposition. 5) The Applicant is represented in these proceedings by Bureau De Ryker. The Opponent is represented by Wilson Gunn. The Applicant filed written submissions in response to the evidence filed by the Opponent. Neither side requested a hearing. The Opponent filed written submissions in lieu of attendance at a hearing. I therefore give this decision after a careful review of all the papers before me. The Evidence The Opponent’s evidence 6) In a witness statement of 28 November 2018 Ms Claire Low states that she is employed by Mondelez Europe Services GmbH, a subsidiary of Mondelez International Inc., the Opponent and Mondelez Europe Services GmbH both being part of the Mondelez International Inc. group of companies. She states that at all material times she has worked in the Opponent’s business, being the Associate Marketing Director for UK and Ireland chocolate at Mondelez Europe Services GmbH, a position she has held since 2011, her key responsibilities being the management of the 3 Opponent's chocolate countlines, which include PICNIC branded chocolate confectionery. 7) Ms Low states that the trade mark PICNIC was first adopted and used in the United Kingdom in 1958 for a chocolate bar consisting of milk chocolate and peanuts, covering chewy nougat, caramel, biscuit, raisins and puffed rice. She appends as Exhibit CL-01 copies of extracts taken from a variety of online sources detailing the launch date of Cadbury's PICNIC chocolate bar. She also appends as Exhibit CL-02 documents “showing the evolution of the PICNIC packaging since 1961”. 8) Ms Low states that, in addition to the PICNIC chocolate bar, which is sold individually, in packs of four and in bags of bite-size bars, during Easter the Opponent produces chocolate eggs each containing two PICNIC chocolate bars. She appends Exhibit CL-03 to show copies of the current packaging for these different formats. She also sets out the following table showing the annual sales figures for PICNIC chocolate bars in the UK for the years 2012-2017: 9) She appends as Exhibit CL-04 sample invoices for each of the years 2011-2016 inclusive to show that the PICNIC chocolate bar is sold extensively through the UK via a number of major natlonwlde retailers, including (but not limited to) ASDA, Sainsbury's, Tesco, Co-op and Morrisons. Ms Low concludes that the PICNIC trade mark is highly visible to consumers throughout the UK, the Opponent’s PICNIC chocolate bar having been “a staple of the UK confectionery landscape since 1958”. The Applicant’s submissions 10) The Applicant’s counterstatement contained what amount to submissions, and it also filed further written submissions during the evidence rounds. These are not 4 summarised here, but I shall refer to them as appropriate in the course of my assessment. Proof of use 11) In Walton International Ltd & Anor v Verweij Fashion BV [2018] EWHC 1608 (Ch) Arnold J summarised the law relating to genuine use as follows: “114……The CJEU has considered what amounts to “genuine use” of a trade mark in a series of cases: Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV [2003] ECR I-2439, La Mer (cited above), Case C-416/04 P Sunrider Corp v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2006] ECR I-4237, Case C-442/07 Verein Radetsky-Order v Bundervsvereinigung Kamaradschaft ‘Feldmarschall Radetsky’ [2008] ECR I- 9223, Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH [2009] ECR I-2759, Case C-149/11 Leno Merken BV v Hagelkruis Beheer BV [EU:C:2012:816], [2013] ETMR 16, Case C-609/11 P Centrotherm Systemtechnik GmbH v Centrotherm Clean Solutions GmbH & Co KG [EU:C:2013:592], [2014] ETMR, Case C-141/13 P Reber Holding & Co KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:C:2014:2089] and Case C-689/15 W.F. Gözze Frottierweberei GmbH v Verein Bremer Baumwollbörse [EU:C:2017:434], [2017] Bus LR 1795. 115. The principles established by these cases may be summarised as follows: (1) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark: Ansul at [35] and [37]. (2) The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark: Ansul at [36]; Sunrider at [70]; Verein at [13]; Leno at [29]; Centrotherm at [71]; Reber at [29]. 5 (3) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin: Ansul at [36]; Sunrider at [70]; Verein at [13]; Silberquelle at [17]; Leno at [29]; Centrotherm at [71]. Accordingly, affixing of a trade mark on goods as a label of quality is not genuine use unless it guarantees, additionally and simultaneously, to consumers that those goods come from a single undertaking under the control of which the goods are manufactured and which is responsible for their quality: Gözze at [43]-[51]. (4) Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns: Ansul at [37]. Internal use by the proprietor does not suffice: Ansul at [37]; Verein at [14] and [22]. Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter: Silberquelle at [20]-[21]. But use by a non-profit making association can constitute genuine use: Verein at [16]-[23]. (5) The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d’être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark: Ansul at [37]-[38]; Verein at [14]; Silberquelle at [18]; Centrotherm at [71]; Reber at [29]. (6) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale 6 and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use: Ansul at [38] and [39]; La Mer at [22]-[23]; Sunrider at [70]-[71], [76]; Leno at [29]-[30], [56]; Centrotherm at [72]-[76]; Reber at [29], [32]-[34].

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