HAVE SOME MADEIRA M'DEAR

The IPKat has come across this opposition from the UK Trade Marks Registry involving a rareish scenario where the earlier mark is a certification mark.

Winez applied to register MADARA ROCK as a trade mark for table wines, the produce of Bulgaria in Class 33. The Instituto opposed the application based on its certification mark for MADEIRA for wines in Class 33. The Instituto claimed that its mark had acquired goodwill and reputation in the UK and the opposition was based on s.5(2)(b) (confusion-based infringement), s.5(4)(a) (earlier right protected by passing off) and s.56 (well-known mark protected by Art.6bis of the Paris Convention) of the Trade Marks Act 1994. Winez countered that its specification was limited to wine that was the product of Bulgaria and that the mark in question was the name of geological feature in Bulgaria.

The opposition was rejected, basically because there was no likelihood of confusion.

*The Instituto’s certification mark was not inherently distinctive. However it had acquired a reputation. As it had been sold in the UK for centuries, it would be known by a greater percentage of the population that the sales figures might suggest. Also, it was a common dictionary word that would be known to the average consumser as the name of an island, a fortified wine, a cake, or a combination of the three.

*Visually the marks were not similar, even though they shared the first three letters and both had the letters RA in them. MADEIRA was a dictionary word and most consumers would be aware of how to pronounce it. However, MADARA was not well known to the average consumers. There were five ways therefore in which consumers might pronounce MADARA and two of those ways were phonetically similar to MADEIRA.

*The ROCK element of Winez’s mark also had to be taken into account. It was as distinctive as the word MADARA. The word ROCK would be seen as fixing the first word to a geographical location (as in Ayres Rock). It would not be confused with a type of grape and there was no descriptive element to it.

*Although the marks had a degree of visual and aural similarity, these were far outweighed by the visual and aural differences. Conceptually, MADEIRA had a clear meaning which was well known as the name of a fortified wine which came from an island of the same name. MADARA was merely suggestive of a specific geographical location that consumers would not be able to locate on a map. Thus, the marks were not similar, there was no likelihood of confusion between the marks of the two parties and the opposition under s.5(2)(b) failed.

*The relevant date for judging whether the mark was barred from registration under s.5(4)(a) was the date of application. In this case Instituto had goodwill in MADEIRA but there was no misrepresentation – on a fair and notional basis the hearing officer had found under s.5(2)(b) that there would be no confusion when used for table wines in Class 33 and the restriction in the specification referring to “produce of Bulgaria” made the possibility of confusion even more remote. As a result, the ingredients of passing off were missing and the opposition under s.5(4)(a) failed.

*The opposition under s.56 failed because confusion is necessary under that section.

The IPKat says that this is a strange case. The earlier mark’s descriptive nature prevents it from being inherently distinctive. However, this descriptive use over centuries has enabled it to acquire a reputation as a certification mark. At the same time though, this reputation is the kiss of death with regard to the confusion case since the known meaning of the MADEIRA mark was said to limit the conceptual similarity between the two marks. This approach appears to be the opposite of the ECJ’s received wisdom that confusion is more likely where the earlier mark has a strong reputation.