The 'likelihood of confusion' conundrum

Friday, 22nd May 2015

The decision in Whyte and Mackay Limited v Origin Wine UK Limited & Anor [2015] EWHC 1271 (Ch) has helped to clarify the law concerning the registration of trade marks that incorporate within them an earlier registered trade mark.

By way of background, in 2013 Whyte and Mackay filed a UK TM application for the words JURA ORIGIN for ''Scotch whisky and Scotch whisky-based liqueurs produced in Scotland''. The application was opposed by Origin Wine & Anor, based on two earlier UK registered trade marks: one for the word ORIGIN and one for the word ORIGINS, both covering ''wine''. They also relied on a Community trade mark for a logo mark that incorporated the words ORIGIN WINE, which covered identical goods to Whyte and Mackay's application.

At first instance, the opposition was successful. It was held that the marks and goods were similar and there would be a likelihood of confusion.

On appeal, this decision was reversed.

The judge hearing the appeal held that the component ORIGIN in the mark JURA ORIGIN did not retain an independent distinctive role, as the two words JURA and  ORIGIN together formed a unit having a different meaning as compared with the meaning of the two words taken separately. He held that the average consumer of Scotch whisky and whisky-based liqueurs would see the combination of the words JURA ORIGIN as meaning that the goods originated from the producer called JURA. Accordingly, the word ORIGIN did not have an independent distinctive role in the mark JURA ORIGIN.

Further, the only similarity between the Opponents' marks and the mark JURA ORIGIN consisted of the common word ORIGIN, which has a low degree of distinctiveness.

Thus, when re-assessing the likelihood of confusion, he concluded that, inter alia, because the word ORIGIN did not play an independent distinctive role in the mark JURA ORIGIN and because the word JURA had no counterpart in the Opponents' marks, there was no likelihood of confusion, namely of relevant average consumers thinking that the goods in question came from the same or economically linked undertakings.             

In summary, the case illustrates that, just because a trade mark incorporates within it another's trade mark, or a significant part of it, does not mean the earlier trade mark owner will automatically succeed in preventing the later mark from becoming registered as a UK trade mark. 

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