Intellectual property case note - Original thinking in composite trade marks

Whyte & Mackay Limited v Origin Wine UK Limited & Dolce Co Invest Limited

Worth knowing about because...

Launching a new brand or sub-brand which incorporates your established brand name alongside another word which has already been registered as a trade mark by a third party can give rise to legal challenges.

This case highlights the limits of this risk, particularly where the earlier mark in question is of a low degree of distinctiveness or becomes entirely descriptive and/or non-distinctive when used with other words as part of the new brand name.What was the case about?

Whyte and Mackay sought to register the mark JURA ORIGIN in respect of their Scottish whiskey products (having registered the JURA trademark back in 1988). Origin Wine and Dolce (being connected companies) objected to this application on the basis of its similarity with their earlier marks containing the word ORIGIN.

A summary of the trade marks in question is set out below:

Situations in which a business creates a new trade mark by adding its own brand name to a word which is already registered as a third party’s trade mark have been dealt with by the courts before, perhaps most notably in Medion v Thomson. That case (which was about the name THOMSON LIFE and the earlier trade mark LIFE) held that the new name may still be confusingly similar to the earlier trade mark where the earlier trade mark was of at least average distinctiveness and where the common element was a distinctive part of the new name.

Hearing officer’s ruling

At first instance the UK Intellectual Property Office’s hearing officer upheld the oppositions on the basis that although the dominant element in the applicant’s mark was the word JURA, the word ORIGIN in the applicant’s mark was still an independent and distinctive element of the mark.

The hearing officer concluded that under Medion v Thomson this meant the incorporation of the word ORIGIN as part of the composite JURA ORIGIN mark was sufficient to render this composite mark confusingly similar to the earlier ORIGIN marks. Bearing in mind also the similarity of the goods specified, this would also lead the average consumer into believing that the applicant and the opponent were commercially linked.

What did the court say?

In evaluating the relevant case law (including cases subsequent to Medion v Thomson which the Hearing Officer has not considered, up to and including the CJEU’s 2014 ruling in Bimbo Doughnuts), the judge concluded that “even where an element of the composite mark which is identical or similar to the earlier trade mark [in this case, the word ORIGIN] has an independent distinctive role, it does not automatically follow that there is a likelihood of confusion [21]”.

In fact, the Judge went further, finding that the word ORIGIN in JURA ORIGIN was merely descriptive of the geographical or trade origin of the goods and so was not an independent and distinctive element capable of confusion with the earlier ORIGIN trade marks.

The hearing officer’s initial ruling was overturned and the JURA ORIGIN mark was allowed to proceed to registration.

Key message

When considering launching a new brand which incorporates your established brand name in conjunction with another word which has already been registered as a trade mark by a third party, it is important to consider whether your use of the new brand (or your application to register it as a trade mark) is likely to give rise to legal challenges.

The case law shows that the courts take a flexible approach to these issues on a case-by-case basis. Where the common element between your new brand and a third party’s trade mark is of average distinctiveness (e.g. LIFE in Medion v Thomson) the court may be more likely to find that likelihood of confusion exists, although such a finding is by no means guaranteed. However where the common element is found not to play an independent and distinctive role in your new brand e.g. ORIGIN in JURA ORIGIN, then the court is more likely to find in your favour. If you do find yourself in a dispute like this, getting the evidence and legal arguments right on this point appears to be the key to success.

Learn more by reading the High Court judgement here, or by contacting our specialist team.

The content of this page is a summary of the law in force at the date of publication and is not exhaustive, nor does it contain definitive advice. Specialist legal advice should be sought in relation to any queries that may arise.