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12 November 2019TrademarksSaman Javed

Unilever enjoys partial win at UKIPO over ‘Mr Whippy’ TM

The UK Intellectual Property Office ( UKIPO) has delivered a partial win for Unilever after it opposed the registration of a trademark that would allegedly be confusing against one of its own.

The decision, published yesterday, November 11, comes after two individuals, Michael Jackson and Sajid Javid, sought to register a figurative mark of a man holding an ice cream cone in front of a blue and pick circular background with the phrase ‘Mr Whippy ice cream’ underneath in pink, blue and white font.

Jackson and Javid sought to register the mark in classes 30 and 43 for goods and services including “coffee, tea, flour, confectionery containing milk, ice cream, ice cream cones, services for providing food and drink and ice cream parlour services”.

Unilever opposed the application, arguing that the mark would infringe its earlier trademarks for ‘Whippy’ and ‘Mr. Whippy’ in class 7, 11 and 30 for goods such as ice cream, frozen confectionery, frozen desserts and chocolates and sweetmeats.

While Unilever’s opposition succeeded in relation to confectionery containing milk, ice cream, ice cream cones and ice cream parlour services, the UKIPO allowed the registration of the mark to proceed for goods including coffee, tea, bread and flour.

In its opposition, Unilever said it sells ice cream under the Mr. Whippy brand through ice cream vans in the UK. These vans are operated by third parties who are in agreement with Unilever and use its ice cream mix “Mr. Whippy Soft” to make their ice cream.

Unilever presented evidence which showed that it had sold 484,000 packs of its ice cream mix in 2018.

The UKIPO said it was clear there had been genuine use of the ‘Mr. Whippy’ trademark in relation to ice cream mix. Additionally, it said the nature of some of the goods covered by both the applied-for mark and the earlier trademark, such as ice cream, are highly similar, likely to share trade channels and be in competition.

The UKIPO also looked at the visual and aural similarity between the applied-for and earlier trademarks.

“Aurally, the parties’ marks will be pronounced in an identical fashion given that the image of the man in the applied-for mark and the word ‘ice cream’ is unlikely to be vocalised,” the UKIPO said.

It said that because both marks convey the message of an individual named ‘Mr Whippy’, they are conceptually highly similar, if not identical.

Additionally, the UKIPO found there to be a likelihood of indirect confusion. It said the average consumer is likely to believe that the goods and services shared by both the applied-for mark and earlier trademark come from the same, or linked, undertaking.

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