From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 12 May 2015

A case of whisky? Of Judge and Jura-prudence

Whyte & MacKay Ltd v Origin Wine UK Ltd and Dolce Co Invest Inc [2015] EWHC 1271 (Ch) is the latest of Mr Justice Arnold's trade mark rulings in the Chancery Division, England and Wales. This Kat missed it at the time it came out since he was up to his ears in, er, trade marks at the INTA Meeting in San Diego. Apologies for the delay.  For the record, the judgment is just 50 paragraphs in length and can be read at a single sitting. What's more, this appellate ruling has been delivered less than 10 months after the date of the hearing officer's decision against which it was made. It's good to see the wheels of justice spinning along so smoothly says this Kat, who recalls the dim and distant days of the past when it all seemed to take rather longer.

This episode all began in February 2013 when Philippines-owned Scottish distillery Whyte & MacKay applied to register the words JURA ORIGIN as a UK trade mark for "Scotch whisky and Scotch whisky-based liqueurs produced in Scotland in Class 33 of the Nice Classification. Origin Wine and Dolce (which were associated companies) opposed on the ground that, given the similarity of JURA ORIGIN to their two earlier UK registered trade mark and the identity or similarity of their respective goods, there was a likelihood of confusion of the relevant consuming public.  The registrations on which Origin Wine and Dolce relied were (i) the word mark ORIGINS, registered in 2001 for "alcoholic beverages (except beers); wine", (ii) the word ORIGIN, registered in 2002 for "wines; alcoholic beverages" and (iii) a Community trade mark, depicted on the right, registered in 2010 for "alcoholic beverages (except beers), including wines".  When put to proof, the opponents could only show use of their marks in relation to wine.  In the opposition proceedings the hearing officer held that, among other things, the parties' respective goods were identical, the opponents' marks had not acquired enhanced distinctiveness through use and that each of them had only a moderate level of distinctiveness.  However the hearing officer upheld the opposition, saying:
"... 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.

* It could not be said that the hearing officer should have concluded that the presence of the word JURA in Whyte & MacKay's mark had represented a conceptual difference over the opponents' marks which had outweighed any similarities caused by the presence of the word ORIGIN. First, the their evidence did not establish that JURA had been a well-known mark for Scotch whisky at the relevant date, but only that there had been use on a "reasonably substantial" scale [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.

Merpel notes that, while the trade mark is still on its way to registration and a possibility of an appeal cannot be eliminated, a swift survey of online whisky reviews suggests that JURA ORIGIN whisky has been on sale for at least the past five years. she wonders whether -- if Origin truly believed that there was a likelihood of confusion -- that company contemplated bringing proceedings for trade mark infringement or passing off. Without further information it seems a little strange that this does not seem to have occurred.

Jura Origin tasting notes here

2 comments:

Claire Lazenby said...

I’ve just been reading the ORIGINS v JURA ORIGIN decision below [thank you, as always, for such a clear summary]; the Hearing Officer’s view in this ORIGINS v JURA ORIGIN opposition is typical of the practice on both sides of the UKIPO [Examination, when an examiner is considering if he should notify the owner of a UK registration which his search found, and Tribunal, for opposition/invalidity] and howsoever the number of successful appeals [see Geoffrey Hobbs’s decision in CHIQUO v CHICO, O/095/14 “dismemberment” is not the test], the UKIPO seems nonetheless to persist in its practice to interpret Medion that Hearing Officers are obliged not to look at the matter overall.

DrZ said...

Jura was not a well known mark of whisky at the relevant date? Blimey that is a surprise given the prevalence of the stuff. Given it was available in most supermarkets at the time (from memory) it does raise the question as to what stage sales for a semi-premium product go above "reasonably substantial"

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':