The alcoholic drinks industry continues to be rife with trade mark disputes, so what should drinks manufacturers/sellers do when considering trade marks?
All drink manufacturers (and their respective brands teams) should generally follow the same steps when deciding on a new trade mark:
- Decide what you would like to register (a word or phrase, a logo, or a combination), ensuring that it is not overly descriptive of the goods or services and not a generic phrase.
- Decide which goods or services are to be covered by the registration. For breweries, Class 32 includes beer, but you may also want to consider merchandise such as clothing in Class 25. For distilleries, the obvious choices are in Class 33 which includes alcoholic beverages other than beer, such as gin, vodka and whisky.
- Decide which territories are to be covered by the registration(s). Ultimately, this depends on where the brand intends to trade, for example just in the UK or across Europe/the world.
There have been a number of recent decisions at the UK Intellectual Property Office relating to trade mark applications for alcoholic drinks, where the applications were opposed by proprietors of earlier, similar trade marks.
Boon Rawd Brewery Co Ltd applied for a trade mark for a logo featuring a dragon above the words ‘SINGHA’ for the following goods:
Aerated water; aerated mineral water; aerated fruit juices; soda water; alcohol-free beers; beer; cider, non-alcoholic; cocktails, non-alcoholic; drinking water; fruit beverages and fruit juices; mineral water (beverages); non-alcoholic beverages; non-alcoholic preparations for making beverages; soft drinks; syrups for making beverages; malt syrup for beverages
This was opposed by Jinshan Food Co Ltd, who owned an earlier registered trade mark for a very similar dragon drawing above the words ‘SINGHA’, including in class 32 for the following goods:
Beer; Ginger beer; Ginger ale; Malt beer; Beer wort; Extracts of hops for making beer; Malt wort; Energy drinks; Non-alcoholic fruit juice beverages; Vegetable drinks; Mineral water [beverages].
What was the outcome?
Ordinarily, this looks to be a straightforward case of the marks being so similar, and registered for similar/identical goods, so as to lead to a likelihood of confusion and so a successful opposition under section 5(2)(b) of the Trade Marks Act 1994.
However, Boon responded to the opposition by applying to invalidate Jinshan’s earlier trade mark. This application for invalidation was successful on a number of grounds:
Under section 5(2)(b) of the Trade Marks Act – the goods are identical or similar and the marks are identical or highly similar compared to even earlier registered trade marks belonging to Boon (the closest of which was an EU trade mark featuring the same dragon above wording which included ‘SINGHA’), leading to a likelihood of confusion.
Under section 5(3) of the Trade Marks Act, Boon had a reputation in its marks for the registered goods such that the relevant public will believe Jinshan’s mark is an extension of Boon’s marks. In order to establish this reputation, Boon relied upon extensive evidence of its advertising activity including its sponsorship of football clubs including Manchester United, Manchester City and Chelsea. Boon also claimed that use of Jinshan’s mark will erode the distinctiveness of the earlier marks, damage their reputation if used in relation to goods of different or disappointing quality, and give an unfair advantage to Jinshan by virtue of the reputation of the earlier marks.
Under section 3(6) (that the application was made in ‘bad faith’). Jinshan must have known of the iconic status of Boon’s beer and its use in the UK when it applied for a virtually identical mark. Boon claims that the application for the contested mark was in bad faith, in order wrongly to benefit from the reputation of Boon’s trade marks and to interfere with Boon’s rightful trade in the UK. Jinshan filed no evidence to explain why its mark contained the identical dominant and highly distinctive components as Boon’s mark which had a substantial reputation.
Takeaway points from the decision
Here the opponent not only lost the opposition (and had to pay their own legal fees plus a contribution toward the applicant’s costs of £2500), but they also lost their registered trade mark due to the successful application for invalidity by Boon. A potential opponent should therefore carefully consider the risks of bringing an opposition, as an invalidity challenge from the applicant may be forthcoming. The flip-side to this, is of course, that a key purpose of registering and owning a registered trade mark is to be able to enforce it against third parties. Decisions as to whether to take action in opposing a similar application can therefore be finely balanced.
This decision is also a good example of how the best form of defence can be to attack the opponent’s trade mark for invalidity. Had the earlier trade mark not been invalidated, then the opposition would be likely to have succeeded. However, here it was recognised that the opponent had clearly registered the earlier trade marks to deliberately be similar to the applicant’s pre-existing rights, and so an invalidation was an appropriate result.
The decision can be read in full here – https://www.ipo.gov.uk/t-challenge-decision-results/o46322.pdf
Morrison Scotch Whisky Distillers Limited -v- Morrisons Supermarket
In a 2022 case involving trade marks relating primarily to spirits, Morrison Scotch Whisky Distillers Limited applied for a trade mark for its company name in relation to the following goods and services:
Class 33: Scotch whisky and Scotch whisky based drinks, all being produced in Scotland.
Class 40: Distilling services; information, advisory and consultancy services relating to the same.
This was opposed by Morrisons (WM Morrison Supermarkets PLC), who owned various earlier trade marks incorporating MORRISONS registered in relation to alcoholic goods in class 35 and relevant services in class 35 (e.g. Retail services connected with the sale of malt, beers, and alcoholic beverages).
What was the outcome?
The opponent succeeded here, again under various grounds:
Section 5(2)(b) – similarity: the applicant’s mark is similar to its own trade marks and covers identical or similar goods and services meaning that there is a likelihood of confusion on the part of the public, including the likelihood of association. The hearing officer found that the Class 33 goods were identical, and found some similarity between the class 40 and class 35 services. They also found that the marks themselves were similar after finding that it is the word ‘MORRISON’ that dominates the overall impression of the mark applied for, with the remaining words playing a lesser role.
Section 5(3) – reputation: in order to establish a reputation, the opponent included evidence to show that it held a 10% market share of UK groceries, with an annual turnover of between £16-18 billion for each of the previous seven years, and an advertising spend of nearly £50 million per year. The hearing officer found a very strong reputation in relation to “supermarket retail services”, that a significant part of the relevant public will make a link between the marks (even in relation to dissimilar services) and that there is potential for the Applicant to gain an unfair advantage by using the mark.
Section 5(4)a – that the registration can be prevented by the law of passing off, due to the unregistered rights of the opponent. There are three things to establish for a successful passing off claim:
Goodwill – the opponent was found to have sufficient protectable goodwill in relation to spirits as evidenced by turnover and advertising expenditure.
Misrepresentation – the officer then found that a substantial number of members of the public are likely to be misled into purchasing the applicant’s goods and services in the mistaken belief that they are the goods and services of the opponent
Damage – damage through diversion of sales is easily foreseeable in these circumstances.
The applicant did attempt to rely on the fact that ‘Morrison’ was their family name, to show due cause for applying for the mark, but they were unable to show sufficient use capable of giving rise to a reputation of its own, as they had only recently started using it in a business sense.
Takeaway points from the decision
While the trade marks here were not identical, the mark applied for did incorporate the name of a popular and very successful UK brand, and so it was perhaps not surprising that the opposition was brought. This is the kind of risk that would be flagged to an applicant in a pre-application clearance search.
Similarly, not all of the goods and services were identical between the mark applied for and the earlier marks, but this is only one factor to consider when making the overall comparison between the marks applied for and the earlier marks.
The decision is also a further example of the limitations of any ‘own name’ defence or justification for applying for a trade mark. Just because the applicants here had the surname ‘Morrison’, did not give them an automatic right to apply for a trade mark for such.
The decision can be read in full here – https://www.ipo.gov.uk/t-challenge-decision-results/o47022.pdf
In a sector so susceptible to trade mark disputes it would always be advisable to search for existing similar or identical brands and trade marks, who may bring a challenge to a trade mark application by way of an opposition, or to use of a trade mark by way of an infringement action. If budget allows, a proper clearance search by a suitably qualified legal professional will be a sound investment – this applies is whether they intend to register the trade mark or not.
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