TICK TOCK for Tea Too Similar to TIC TAC for Confectionery

A Hearings Officer recently upheld the opposition by Ferrero to registration of TICK TOCK in class 30 for tea.

Wistbray Limited, a United Kingdom company, applied for the trade mark TICK TOCK in class 30 for tea. Ferrero opposed claiming that it was too similar to its own mark TIC TAC, which it had used extensively for confectionery in New Zealand for some years. Ferrero, relying on its reputation in the mark TIC TAC for confectionery, produced a survey demonstrating that over 95% of consumers were aware of the TIC TAC brand. It also relied on several registered trade marks covering confectionery. Wistbray did not file any evidence.

In the Hearings Officer’s view TICK and TIC are pronounced the same. The hearings officer went on to say that not only were TAC and TOCK similar but “may even be identical” and further that to all intents and purposes, the marks “became the same”.

In relation to the goods the Hearings Officer conceded that the goods (tea and confectionery) were quite different and were unlikely to be positioned together in supermarkets and convenience stores. However, the strong reputation in the TIC TAC mark and the strong similarity between the marks was said to be likely to lead to confusion and deception despite the difference in the goods.

Although Ferrero had several trade mark registrations for TIC TAC for non-medicated confectionery in class 30, Ferrero failed on this ground. The Hearings Officer dismissed the opposition on the basis of the earlier registrations simply stating that use of TICK TOCK in relation to goods covered by the application is not likely to deceive or cause confusion. It is difficult to understand how an opposition can succeed on the basis of reputation but fail on the basis of trade mark registrations for the same mark for the same goods as the reputation is claimed for.

Ferrero also claimed that the mark TICK TOCK lacked distinctive character. Presumably this was on the basis that it would always be confusingly associated with TIC TAC and was not capable of distinguishing Wistbray’s goods from those of Ferrero sold under TIC TAC. The Hearings Officer dismissed the opposition on this ground on the basis that there was no evidence before him to address the objection that the mark TICK TOCK lacked distinctive character.

Neither party requested to be heard at a hearing or filed submissions. Rather, both parties asked that the matter be decided on the papers filed. In the absence of submissions from the parties the Hearings Officer appeared to lack understanding on how the evidence related to the grounds of opposition as pleaded.

Wistbray is not known to have lodged an appeal to the High Court and for the time being the Hearings Officer’s ruling stands.