UK: Whisky trade mark JURA ORIGIN allowed to proceed to registration on appeal

03 July 2015

Hilary Atherton

The High Court of England and Wales allowed Whyte and Mackay Ltd's appeal from a decision of the hearing officer of the UK Intellectual Property Office and allowed Whyte and Mackay's JURA ORIGIN mark (the "Jura Mark") to proceed to registration in respect of "Scotch whisky and Scotch whisky-based liqueurs produced in Scotland" in Class 33 (Whyte and Mackay Ltd v Origin Wine UK Ltd & Anr (Arnold J; [2015] EWHC 1271 (Ch); 6 May 2015).

Background

Whyte and Mackay's trade mark application was opposed under Section 5(2)(b) of the Trade Marks Act 1994 (equivalent to Article 8(1)(b) of the Community Trade Mark Regulation) by:

  • Origin Wine UK Ltd (the first respondent) on the basis of its earlier registration for the word mark ORIGIN for "wine" in Class 33 (the "ORIGIN Mark)"; and
  • Dolce Co Invest Inc (the second respondent and an associated company of Origin Wine UK Ltd) on the basis of its earlier registration for the logo shown below for "wines; alcoholic beverages" in Class 33 (the "Logo Mark"):

The hearing officer upheld the oppositions and White & Mackay appealed.

Decision

On appeal by Whyte and Mackay to the High Court, the Judge found:

  • that the hearing officer was wrong to decide that the word ORIGIN was an independent and distinctive element of the Jura Mark:

-  The hearing officer had failed at the outset to consider how the average consumer would understand the word ORIGIN in the context of the relevant goods, i.e. whether in relation to wine or Scotch whisky and whisky-based liqueurs, the average consumer would understand the word ORIGIN as referring to the origin of the goods (whether their geographical origin or their trade origin).

-   This was particularly true of both wine and Scotch whisky, where geographical origin was both an important factor in quality and frequently intimately associated with trade origin.

-   As such, ORIGIN was inherently descriptive, or at least non-distinctive, of the goods in issue. As the average consumer would understand the word JURA as an indication of the name of the producer, JURA ORIGIN would be understood as a unit. Therefore, the word ORIGIN did not have an independent distinctive role in the Jura Mark;

  • that the hearing officer failed properly to take account of the significance of the absence from the Jura Mark of anything resembling the vine-leaf device when comparing it with the Logo Mark;
  • that, while the hearing officer was entitled to find as he did that there was some similarity between each of the marks and at least a likelihood of indirect confusion, he had erred in failing to apply the principle that, where the only similarity between the mark consists of a common element which has low distinctiveness, that will not normally give rise to a likelihood of confusion; and
  • no likelihood of confusion in relation to either the ORIGIN Mark or the Logo Mark.

Comment

This case serves as a helpful reminder that a composite mark cannot automatically be denied registration (or found to infringe an earlier mark) merely because an element of that composite mark is identical (or similar) to an earlier mark. It is necessary to assess:

  • whether the average consumer would perceive that element to have significance independently of the composite mark as a whole; and
  • whether that would lead to a likelihood of confusion.

Authors