"... I believe that the marks are sufficiently similar that the average consumer would be directly confused. However, in case I am wrong on this it is also my view that, should the average consumer not mistake the marks for each other, the similarities in the marks and goods are such that the it would lead the average consumer into believing that the applicant and the opponent are commercially linked and they are likely to assume that the products produced under the application have a common origin to those produced under the earlier mark.
The situation is stronger in respect of the opponents' [logo mark] in that the goods are identical and the marks have a degree of similarity such that the average consumer would be directly confused. Again should the average consumer not mistake the marks for each other, the similarities in the marks and goods are such that the it would lead the average consumer into believing that the applicant and the opponent are commercially linked and they are likely to assume that the products produced under the application have a common origin to those produced under the earlier mark. …"White & MacKay appealed, arguing that the hearing officer had not applied the principle of Case C-120/04 Medion AG v Thomson multimedia Sales Germany & Austria GmbH with regard to whether the earlier mark had an independent significant role in the later applicant's mark; that he had failed to establish the proper level of distinctive character of the respective marks; that he had failed to compare them properly and that he had wrongly assessed the likelihood of confusion between them.
Arnold J allowed the appeal and said that JURA ORIGIN could proceed to registration. In his view:
* There had been an error of principle in the hearing officer’s approach in that he had failed at the outset to consider how the average consumer would understand the word ORIGIN in the context of the relevant goods. The average consumer would understand the word ORIGIN as referring to the origin of the goods, whether this meant their geographical origin or their trade origin. The word ORIGIN was inherently descriptive, or at least non-distinctive, for the goods in issue.
* It could not be correct to assess the word marks and the logo mark as having precisely the same level of distinctiveness. On the evidence, the hearing officer had failed to take proper account of the significance of the absence from the words JURA ORIGIN of anything resembling its vine-leaf device.
* As for the words JURA ORIGIN, given that the average consumer would perceive the word JURA as being distinctive of Whyte & MacKay's goods,the expression JURA ORIGIN would be understood by the average consumer as meaning that the goods originated from the producer of JURA and the expression would be understood as a unit. Accordingly, the word ORIGIN did not have an independent distinctive role in the words JURA ORIGIN.
[this Kat isn't sure precisely what those words mean, though he is confident that "substantial" does not mean here what it means in copyright law, where it really just means "having some substance, even if's just a little". Also, possibly because of the amount of time he spends passing through airports with Duty Free shops, he wonders whether JURA has a sort of niche fame within the whisky-purchasing fraternity even though wine-drinkers may not recognise it].
* The JURA ORIGIN mark was not dissimilar overall to both the word marks and the logo mark. However, the hearing officer had failed to assess the likelihood of confusion properly: standing back and considering the matter overall, there was no likelihood of confusion.
Jura Origin tasting notes here