Whyte and MacKay Ltd v Origin Wine UK Ltd and Another

Hearing date: 28 April 2015

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

Introduction

On 6 February 2013 the Appellant, Whyte and Mackay Ltd, filed UK Trade Mark Application No. 2651081 for the words JURA ORIGIN in respect of "Scotch whisky and Scotch whisky-based liqueurs produced in Scotland" in Class 33. I shall refer to this as "the Jura Mark".

The application was opposed by the Respondents, Origin Wine UK Ltd ("Origin Wine") and Dolce Co Invest Inc ("Dolce"), which are associated companies, on grounds raised under section 5(2)(b) of the Trade Marks Act 1994, which implements Article 5(1)(b) of European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) ("the Directive").

Origin Wine relied on two earlier UK Registered Trade Marks:

i) No. 2275969 for the word ORIGINS registered as of 22 July 2001 for "alcoholic beverages (except beers); wine" in Class 33; and

ii) No. 2307360 for the word ORIGIN registered as of 6 August 2002 for "wines; alcoholic beverages" in Class 33.

The Appellant required Origin Wine to prove use of these marks. It is common ground that Origin Wine only proved use of them in relation to "wine", and thus that they are to be treated for the purposes of the opposition as if they were only registered for those goods. It is also common ground that, although the marks are nearly identical, the second mark represents the Respondents' best case. I shall refer to this as "the Word Mark".

Dolce relied on its earlier Community Trade Mark No. 9065384 for the logo shown below registered as of 29 April 2010 for "alcoholic beverages (except beers), including wines" in Class 33. I shall refer to this as "the Logo Mark".

Both sides filed brief written evidence. As usual in such cases, there was no cross-examination. After a hearing at which the parties were represented by their respective trade mark attorneys, the oppositions were upheld by George Salthouse acting for the Registrar in a written decision dated 23 July 2014 (O/325/14).

The Appellant now appeals. The Appellant applied for permission to adduce further evidence in support of its appeal. I refused that application for the reasons given in an extempore judgment during the course of the hearing.

The hearing officer's decision

The hearing officer's decision may be summarised as follows. First, he set out the Trade Mark Registry's standard summary of the principal decisions of the Court of Justice of the European Union concerning Article 5(1)(b) of the Directive or its equivalents, namely Case C-251/95 SABEL BV v Puma AG [1997] ECR I-6191, Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Meyer Inc [1998] ECR I-5507, Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-3819, Case C-425/98 Marca Mode CV v Adidas AG [2000] ECR I-4861, Case C-3/03 Matrazen Concord GmbH v Office for Harmonisation in the Internal Market [2004] ECR I-3657, Case C-120/04 Medion AG v Thomson Sales Germany & Austria GmbH [2005] ECR I-8551 and Case C-334/05 Office for Harmonisation in the Internal Market v Shaker de L. Laudato & C SAS [2007] ECR I-4529:

"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;

(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;

(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;

(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and

(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."

Secondly, he held (at [20]) that none of the Respondents' marks had acquired enhanced distinctiveness through use and that all of them had a "moderate level" of inherent distinctiveness for the goods for which they are registered. It is to be noted that he did not consider the meaning of the word "origin" in this context, nor did he explain why he considered that the Word Mark had the same level of inherent distinctiveness as the Logo Mark.

Thirdly, he held (at [21]) that the average consumer was the adult public at large, (at [22]) that the selection process for the goods in question was likely to be "predominantly a visual one", although "aural considerations" would "also play their part", and (at [22]) that the average consumer would pay a "reasonable level" of attention.

Fourthly, he held (at [26]) that the goods within the Appellant's specification were identical to "alcoholic beverages" in the specification of the Logo Mark and (at [28]) that the goods within the Appellant's specification had a "low degree" of similarity to "wine" in the specification of the Word Mark.

Fifthly, he assessed the comparison between the Jura Mark on the one hand and the Word and Logo Marks on the other hand as follows:

"35. From the evidence and the written and oral comments by the applicant it is clear that the applicant uses the brand JURA as its 'house' or 'lead' brand and then has a number of sub brands which designate the age of the whisky to be found inside the bottle and/or different blends. Ms Shah describes the word "origin" in the applicant's mark as descriptive. However, the average consumer would not immediately be aware that the term refers to a 10 year old scotch, they would have to be educated into this and there is no evidence that this is the case. Similarly, if the consumer were aware that JURA is an island in the Southern Inner Hebrides then the term 'origin' would suggest that the contents of the bottle upon which the mark is used was produced on the island. However, there is no evidence that consumers are aware of the existence of the Isle of Jura. To my mind, the dominant element in the applicant's mark must be the word JURA, however the word 'origin' is an independent and distinctive element. The two words only 'hang together' if one is educated into the existence of the Isle of Jura. The word 'origin' is clearly used as a sub-brand by the applicant as the applicant itself has acknowledged. In my opinion, although there are obvious differences between the marks of the two parties, the whole of the opponent's mark has been subsumed into the applicant's mark with a 'house' brand simply placed in front. The opponent's mark 2307360 is at least moderately similar to the mark in suit.

36. Moving onto consider the opponent's CTM 9065384 much the same contentions apply. The leaf device is eye catching but it will not form any part of aural or conceptual considerations, and leaf devices upon alcoholic beverage labels are commonplace, such that they largely go unnoticed. Even if the device element were seen as distinctive it cannot be verbalised. The only other difference is the presence of the word 'wine' in the opponent's mark. The applicant contended that use of this mark upon anything other than wine would be deceptive. However, this is not a line of defence open to them. I accept that it will cause the average consumer to pause if the mark is used on whisky however, it would probably be quickly rationalised by the consumer as being a reference to the producer 'Origin Wine' and not a description of the contents. I come to the conclusion that there is a moderate degree of similarity between the opponent's mark 9065384 and the mark in suit."

Sixthly, having...