Breweries have made the news in recent months with some top brand drinks involved in trade mark disputes. However, it is not just breweries in the food and drink sector that encounter these issues when looking to apply for trade marks for new brands and product names - other alcoholic drinks manufacturers have too.
What should drinks manufacturers do?
All drink manufacturers (and their respective brands teams) should generally follow the same steps as breweries when deciding on a new brand or trade mark:
Decide what they 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 distilleries, the obvious choices are in Class 33 which includes alcoholic beverages other than beer, such as gin, vodka and whisky.
Decide which territories to be covered by the registration(s). Ultimately this depends on where the brand intends to trade.
It would then always be advisable to search for existing similar or identical brands and trade marks. If budget allows, a proper clearance search by a suitably qualified professional will be a sound investment.
There have been a number of recent decisions at the UK Intellectual Property Office relating to trade mark applications for other alcoholic drinks, such as spirits, where the applications were opposed by proprietors of earlier registered, similar trade marks.
Brewdog’s ‘Tiger Strike’ v ‘Tiger Vodka’ - A Tiger in the (Distilling) Tank?
Throughout Brewdog’s rapid expansion in the alcoholic drinks market, they have regularly encountered issues with their branding and trade mark strategy – both when enforcing their trade marks and when their applications have been opposed by a competitor with an earlier brand.
A recent decision illustrates that Brewdog’s trade mark difficulties are not limited to their beer brands and trade marks. In June 2020 Brewdog applied for a trade mark for ‘Tiger Strike’ for the following goods in class 33:
Alcoholic beverages (except beer); spirits; distilled spirits; whisky; blended whisky; liqueurs; gin; vodka; rum.
There was however an existing ‘Tiger’ brand used by a separate company for various spirits, which was protected by way of six UK trade marks registered for what were found to be identical goods. These were registrations for the following marks: ‘Tiger Gin’, ‘Tiger Rum’, ‘Tiger Spirits’, ‘Tiger Tequila’, ‘Tiger Vodka’, and ‘Tiger Whisky’.
The decision focused on comparing Brewdog’s ‘Tiger Strike’ with ‘Tiger Vodka’, as the officer noted that the other marks would not put the opponent in a better position (as they each consist of the word ‘Tiger’ followed by the name of an alcoholic drink).
The opponent relied on section 5(2)(b) of the Trade Marks Act 1994, which provides that:
a trade mark shall not be registered if because—
(A) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, OR
(B) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
The opposition to Brewdog’s trade mark application succeeded in this case, after the hearing officer made a global assessment of all relevant factors, with the decision noting in particular that:
The first words are identical, the marks have medium visual, aural and conceptual similarity, and the second word in the earlier mark is descriptive;
The use of ‘Tiger’ in the earlier mark was inherently distinctive of the goods covered by that trade mark to a medium degree - it neither alludes to nor describes the goods;
The identity of the goods covered by the marks may be used to offset a lesser degree of similarity between the marks; and
The goods will be purchased with no more than a medium level of attention, a significant proportion of average consumers will note the differences between the respective marks but conclude that the marks relate to economically-linked undertakings, e.g. ‘Tiger Strike’ might be perceived as a range or line of drinks under an overarching earlier brand ‘Tiger’.
This decision shows again that choosing a distinctive and unique name for a new sub-brand of goods is important – it may be difficult to obtain trade mark protection for your new brand, and it may also leave you open to a trade mark infringement claim and a costly rebrand exercise. As mentioned, a clearance search prior to deciding on a new brand may of course help to avoid such situations, or at least provide a better picture of the potential risk. Filing an application itself can also flush out existing rights.
The decision also shows that what may be seen as a smaller competitor can succeed against a larger competitor, provided they have the relevant, earlier registered rights (as the opponent did here). The protection afforded by an earlier registered trade mark can have real value to businesses of all sizes, particularly in crowded industries where brand recognition and reputation are key.
Thirsty Jack v Jack Daniel’s – Jack of all trade marks?
Another recent UKIPO Tribunal decision concerned an applicant’s attempt to register a trade mark for ‘THIRSTY JACK’ in relation to various alcoholic beverages in Class 33, including Alcoholic beverages, except beer and Alcoholic beverages with fruit carbonated.
This application was, perhaps predictably, opposed by Jack Daniel’s Properties Inc, who owns various trade marks incorporating “Jack Daniels” and even just the word “Jack” (including for “Gentleman Jack” and “Winter Jack”).
The opposition was again brought under section 5(2)(b) of the Trade Marks Act 1994.
The opposition succeeded based on each earlier trade mark raised after the hearing officer considered the following in relation to the trade marks relied upon by Jack Daniel’s:
Comparing “THIRSTY JACK” vs “JACK DANIEL’S”
The goods covered by the two trade marks are either identical or share between a medium and high level of similarity;
The average consumer is again an adult member of the general public who pays a medium level of attention during the purchasing process;
Both marks form a unit with no one word dominating;
Low level of visual and aural similarity and a very low level of conceptual similarity;
The Jack Daniel’s mark has a reasonable level of inherent distinctive character but that this is enhanced to a high level because of the use made of the mark.
Comparing “THIRSTY JACK” vs “WINTER JACK” / “GENTLEMAN JACK”
The same as above in relation to similarity of goods, average consumer, and domination (or lack of) of words within the marks;
The marks have a medium level of visual similarity and a low to medium level of aural and conceptual similarity;
The Jack Daniel’s marks have a reasonable level of inherent distinctive character but enjoy a moderate level of enhanced distinctive character.
This decision shows how larger brands that have established themselves in a marketplace will look to enforce their trade marks against similar new entries into the market, and how they can succeed where there is an overlap between the brand names (e.g. even in just the word ‘Jack’ in this example) and the goods covered, which persuades the tribunal that there exists a likelihood of confusion on the part of the public.
The decision also shows how the distinctiveness of an earlier mark can be enhanced as a result of the use made of the mark over time by the trade mark owner. This is particularly something to consider when a new brand is considering applying for a trade mark similar to one of its more well-known competitors.
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Danny is a solicitor in our Intellectual Property team, with a specific focus on contentious intellectual property matters.
He advises clients on the full spectrum of intellectual property rights, including patents, trade marks, designs, and copyright. Danny has particular experience advising clients in the retail, brewing, education, technology, online and social media, and IT sectors.