In July 2011, the Swiss company, Goldkenn SA, applied to register the trade mark SWISSDREAM for goods in Class 30 including "confectionery and ices"
Cadbury dream is a white chocolate bar and ice cream, that was launched in 2002. Between 2002-2007, miniature versions of this product also appeared in Cadburyís Heroes assortments.
This was the Cadbury chocolate bar wrapper in 2002.
Since 2003, the wrapper has looked like this.
Cadbury dream was not one of Cadburyís top selling products. Sales of Cadbury dream chocolate bars during a 12 week period in 2002 were £11.7m, but this had declined to annual sales of £0.88m by 2011 (accounting for 1.62m units). Ice cream sales between 2007-2011 were over £2m. By contrast, UK sales of Cadbury Dairy Milk chocolate bars were worth £418m in 2010 and the UK chocolate confectionery market as a whole was valued at £3.6 billion in the same year.
Cadbury opposed Goldkennís trade mark application and relied on four UK trade mark registrations. These were:
- CADBURY DREAM (words) registered for "chilled desserts, puddings, mousses, yoghurt, fromage frais" in Class 29 and ìchilled and frozen confections and desserts" in Class 30.
- registered for "chocolate, chocolates, non-medicated confectionery; preparations made from cereal, biscuits, cakes, wafers; snack foods; ice cream and ice cream products, chilled and frozen confections and desserts" in Class 30.
- CADBURY'S DREAM (words), including the disclaimer "registration of this mark shall give no right to the exclusive use of the word "Dream", registered for "chocolate, chocolates, and non-medicated confectionery, but not including ice-cream confections" in Class 30.
- registered for "chocolate, chocolates, non-medicated confectionery, chewing gum, biscuits, cakes, ice cream and frozen confections" in Class 30.
This final mark was the wrapper used for the individual chocolate sweet within the Cadbury's Heroes assortment from 2002 until at least May 2007. The grounds for opposition were that:
(i) SWISSDREAM is similar to the above mentioned, Cadbury owned, earlier marks, the goods for which these earlier marks are registered are either identical with or similar to the goods covered by Goldkenn's trade mark application and there is a likelihood of confusion (Section 5(2)(b)); and
(ii) use of SWISSDREAM in the UK would amount to passing off at common law (Section 5(4)(a)).
In response, Goldkenn put Cadbury to proof of use of all four marks.
Goldkenn also showed in their evidence:
(i) that the word "dream/dreamy" is used by other manufacturers in relation to food items including chocolate;
(ii) the recent drop in sales of Cadbury dream products compared to sales of other Cadbury products; and
(iii) Cadbury's inaction against other marks consisting of or including the word "dream" such as Chocolate dream for non-medicated confectionery.
The Hearing Officer, Mr Allan James (deciding yet another Cadbury opposition), accepted that the trade mark CADBURY('S) DREAM was distinctive. However, he disagreed with Cadbury that the word dream alone was distinctive of them.
A number of factors were relevant in reaching this conclusion:
- sales of Cadbury dream had declined throughout the 5 year period ending in 2011;
- there had been very little promotion of Cadbury dream in the 5 years leading up to the relevant date;
- sales were only a tiny fraction of the £3.6 billion UK chocolate confectionery market and the UK market for ice cream;
- Cadbury itself regarded Cadbury dream as a niche product;
Cadbury was not the only user of dream as of the relevant date;
All the opponents use of dream was in conjunction with the well known house mark Cadbury(ës) and in association with particular blue/cream packaging designs;
here was no direct evidence that anyone regarded dream alone as distinctive of Cadburyís products.
Mr James concluded that consumers didnít need to rely on the word dream to select Cadbury dream chocolate and ice creams. It was only "weakly distinctive" and was descriptive for confectionery. Whilst a significant number of consumers would regard dream as a secondary trade mark, a significant proportion would, by contrast, have been aware that the word was simultaneously being used in a laudatory fashion.
Mr James then considered the proof of use put forward by Cadbury and concluded that the opponent had shown use of the trade mark Cadbury dream in relation to "chocolate covered ice cream" and their registered (non-Heroes) chocolate bar wrapper in respect of chocolate bars.
The Hearing Officer then moved on to the matter of similarity and likelihood of confusion.
Mr James held that Cadbury could not rely on their earlier UK trade mark registration for CADBURY'S DREAM, because of the disclaimer in respect of the word dream.
The strongest Cadbury mark was said to be CADBURY DREAM. However, the Hearing Officer held that this mark was not confusingly similar to SWISSDREAM. According to Mr James whilst, on the one hand, there was
- a modest degree of visual and aural similarity between the two marks; and
- a relatively high level of conceptual similarity, given the shared dream meanings on the other hand,
- "dream" was only "weakly distinctive" of Cadbury for chocolate covered ice cream as a result of the use made of Cadbury dream;
- the similarity of concept (dream) was not a distinctive one;
- SWISSDREAM didnt include the Cadbury house mark; and
- the word "Swiss" was conjoined with the word dream rather than being used as a separate descriptor in relation to the mark 'Dream'.
Mr James concluded from this that the presence of dream was most likely to be seen by consumers as no more than a coincidence.
Turning to the second ground of opposition, Cadbury failed to persuade Mr James that use of SWISSDREAM would amount to passing off. There was no misrepresentation or likelihood of deception, two key aspects of the passing off test.
Cadburys customers or potential customers would not regard SWISSDREAM chocolate confectionery as a Cadbury product because (i) of the absence of the Cadbury house mark and (ii) Cadbury has no reputation in Swiss chocolate, and so the word "Swiss" would not trigger an association with Cadbury.
Mr James was at pains to acknowledge that, whilst putting a house mark in front of a distinctive mark is often insufficient to avoid confusion, it was enough in this case because the word "dream" is only weakly distinctive of Cadbury. Even if SWISSDREAM had been written in a handwritten style, like the Cadbury dream script, Mr James doubted that a substantial number of Cadburyís customers or potential customers would assume an economic connection between SWISSDREAM and the opponent (Cadbury).
It is submitted that the correct decision was made here. 'Dream' is a limping trade mark. Cadbury didn't own a registration for DREAM per se nor did it use 'dream' without its famous Cadbury(s) house mark. Perhaps more importantly, Cadbury filed no direct evidence which proved that consumers only associated 'dream' with itself for chocolate bars or ice cream.
This case is also interesting in that it shows how evidence can be used to discredit an opponentís alleged goodwill and reputation in its earlier mark and also to show that a common element of both parties' marks has little distinctiveness, so less weight should be placed on it when making a global appreciation assessment.
Jenkins represented Goldkenn in this opposition.