• IN THE UK OFFICE

    A Successful Dilution Action

    AgroEvo UK Limited filed a UK trade mark application for Galaxy in respect of preparations for killing weeds and destroying vermin; pesticides, insecticides, herbicides, fungicides". The application was opposed by Mars UK Limited principally on the basis of their UK and CTM registrations for the trade mark Galaxy in Classes 29 and 30 as well as their reputation in Galaxy as a chocolate product (Section 5(3) of the Trade Marks Act 1994; the dilution section).

    The Hearing Officer found in favour of the opponent and commented as follows on the key elements of Section 5(3),

    • It was not necessary to show confusion, actual or potential, to succeed under Section 5(3). The fact that AgrEvo had never experienced confusion between any of its earlier agrochemical products and any consumer products was therefore not fatal to the opponent’s case.

    • Since AgrEvo had not shown that it had used the mark at all (let alone prior to the opponent’s registration or first use of Galaxy) and since they, AgrEvo, had offered no explanation as to how the mark came to be adopted, they could gain no assistance from the words "without due cause".

    • Although the survey conducted by Mars was flawed, it confirmed that Galaxy was a well known confectionery in the UK. To succeed under the section, however, it was not enough that the public, when seeing a mark in use on a product (e.g. an insecticide), was reminded of an identical mark having a reputation in relation to dissimilar goods (e.g. chocolate). The present case had an additional element, however, namely the potentially damaging association of a confectionery product with a product that was designed to kill.

    • The present opposition was factually very similar to the Benelux Claeryn gin/Klarein detergent case, as well as the Black Magic chocolate/laxative case (1941 RPC 91). In all of these cases, the potential for damage to the reputation of the earlier mark was manifest. There was no doubt that the establishment of Galaxy as a trade mark for insecticides and the like would diminish the value of the Galaxy chocolate brand, given the unpleasant associations that would be made by the public. In other words, the use of Galaxy by AgrEvo would tarnish the reputation of Mars’ product.

     

    Comment

    This decision should be contrasted with the OHIM Appeal Board decision involving Duplo chocolate discussed below. The difference between the two outcomes is clearly explained by the nature of the later product. In the Duplo opposition, the chocolate manufacturer was trying to prevent the registration of the same mark for office equipment, not a commercial area that is either likely to diminish or tarnish the reputation of an earlier chocolate product. Further, given that Duplo is not a mark with a particularly high level of inherent distinctiveness, OHIM decided that Duplo chocolate purchasers were unlikely to think of those products when observing Duplo photocopiers and the like.

    By contrast, the UK Hearing Officer had no doubt that a Galaxy rat poison (or similar) would have an adverse effect on the image (or reputation) of Galaxy chocolate.

    Galaxy is not the type of trade mark, like Kodak or Viagra, that can claim an absolute trade mark monopoly across all boundaries. Indeed a Galaxy motor vehicle coexists quite happily with Galaxy chocolate in the UK. However, a reasonable commercial view as well as the public interest dictates that the same trade marks should not be registered and used for both food/drink products and household or garden chemicals or poisons.