Decision Nº O/600/21 from Intellectual Property Office - (Trade market), 12 August 2021
| Judge | Ms C Boucher |
| Registration Number | UK00003401303 |
| Date | 12 August 2021 |
| Court | Intellectual Property Office (United Kingdom) |
| Administrative Decision Number | O/600/21 |
O/600/21
IN THE MATTER OF TRADE MARK APPLICATION NO. 3401303
BY MODERN CONTRADICTION LIMITED
TO REGISTER:
Spirited Seltzer
AS A TRADE MARK IN CLASSES 32 & 33
AND
IN THE MATTER OF THE OPPOSITION THERETO
UNDER NO. 420324 BY
BOATHOUSE BEVERAGE, LLC
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BACKGROUND AND PLEADINGS
1. Modern Contradiction Limited (“the applicant”) applied to register Spirited Seltzer
as a trade mark in the United Kingdom on 22 May 2019 for the goods in Classes 32
and 33 listed in the Annex to this decision. The application was accepted and published
on 28 February 2020.
2. On 24 April 2020, the application was opposed by Boathouse Beverage, LLC (“the
opponent”). The opposition is based on sections 5(2)(b), 3(1)(c) and 3(3)(b) of the
3. Under section 5(2)(b), the opponent is relying on UK Trade Mark (“UKTM”) No.
3242273, which was applied for on 7 July 2017 and registered on 29 September 2017
for the following goods in Class 33: Alcoholic beverages (except beer); alcoholic fruit
beverages; low alcoholic drinks; alcoholic malt drinks. The mark is shown below:
4. The opponent claims that the contested goods are identical or highly similar to the
earlier goods, and that the marks are similar, and that consequently, there exists a
likelihood of confusion on the part of the public, including the likelihood of association,
and the contested application should be refused in its entirety under section 5(2)(b).
5. Under section 3(1)(c), the opponent claims that the contested mark is descriptive
of the characteristics of the contested goods in Class 33, namely that it is carbonated
water containing alcohol, or an alcoholic drink based on carbonated water. It states
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that “Seltzer” is defined in the Collins English Dictionary as “a natural effervescent
water with a high content of minerals” and that when consumers see “Spirited” in the
contested mark they will understand this to mean an alcoholic drink. Consequently,
the mark is unable to fulfil its essential function of guaranteeing the origin of the mark’s
goods to the consumer, where the goods are alcoholic drinks.
6. Under section 3(3)(b), the opponent claims that the contested mark is deceptive as
to the nature of the goods in Class 32. As the consumer would understand the mark
to denote an alcoholic drink, they would be deceived as to the nature of the goods
were the mark to be used for non-alcoholic drinks such as aerated fruit juices, aerated
waters and carbonated waters.
7. The applicant filed a defence and counterstatement denying the claims made. It
contends that the marks are dissimilar and, while it admits that there is some overlap
in the goods, that the application is being made for a wider range of alcoholic and non-
alcoholic beverages. Hence there is no likelihood of confusion. It also denies that the
contested mark is either descriptive or deceptive.
8. The matter came to be heard by me by videolink on 26 May 2021. The opponent
was represented by Julius Stobbs of Stobbs and the applicant by Azhar Sadique of
Keltie LLP.
EVIDENCE AND SUBMISSIONS
9. The opponent’s evidence in chief comes in the form of a witness statement from
Harpreet Dhaliwal, a Trade Mark Attorney at the opponent’s representative, Stobbs. It
is dated 13 October 2020. The exhibits consist of printouts from websites on which,
according to Ms Dhaliwal, the word “spirited” is used descriptively when referring to an
alcoholic beverage and other printouts that show the word “seltzer” as descriptive for
beverages.
10. The applicant filed evidence on 14 January 2021. This consisted of a witness
statement and nine exhibits from Amelia Skelding, a Trade Mark Associate at the
applicant’s representative, Keltie LLP, dated 12 January 2021. She comments on the
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