Ireland: IP Update: Tullamore DEW In Low Spirits As Opposition To The Registration Of Lynch's Tullamore Brew Is Dismissed

On 18 August 2015, the Controller of Patents, Design and Trade Marks (the "Controller") handed down his decision to allow the registration of the trade marks "Lynch's Tullamore Brew" and "Lynchs Tullamore Brew". The application for registration, which was initially lodged in April 2012, was met with opposition from William Grant & Sons Irish Brands Limited ("William Grant"), the proprietor of the Irish trade mark Tullamore DEW, a well-known Irish whiskey brand first distilled in Tullamore in 1829.

The applicant, Mr Emmet Lynch, is a publican operating "Hugh Lynch's" public house in Tullamore. Mr Lynch deposed that the concept for the trade mark was born out of his interest in micro-brewing and, in an attempt to diversify his business; it was his intention to produce his own beer in the coming years. The application was made under Class 32 of the Nice Classification which includes beer, stout, ale and lager. No application was made to register the mark in Class 33 for whiskey. Interestingly, an application was also initially made by Mr Lynch for the registration of the mark Tullamore Brew but was subsequently withdrawn.

William Grant opposed the registration of the mark on three grounds which were individually addressed by the Controller as follows:

a)  Likelihood of confusion on the part of the public, and likelihood of association with the Tullamore DEW mark.

The respective goods, i.e. beer and whiskey, were considered to be similar but not complimentary or identical. From a practical perspective, it was noted that they are created using different methods of production and relate to different classes of the Nice Classification. From the consumers' point of view it was held that the consumers at issue are adults who have distinct preferences when it comes to alcohol and "if someone's favourite beer was unavailable in a bar, restaurant or off-licence it is highly unlikely that they would select a whiskey instead."

When assessing the potential similarity between the marks, the Controller found that "Brew" and "Tullamore" were not the most distinctive elements of the mark and were merely a reference to the goods and the location of where the brewing is carried out respectively. It was acknowledged that the use of family names as a brand is common in brewing and that in this instance the word "Lynch's" dominated the mark. In these circumstances, the Controller held "undoubtedly in my opinion, sufficient distance is put between the respective mark (sic) by the presence of the word Lynch's".

Ultimately, the Controller was satisfied that the average consumer was not likely to be confused as to the origin of the goods or to believe that such goods were produced by an undertaking associated with the proprietor of the Tullamore DEW mark and rejected the opposition based on this ground.

b)  Use of mark would take unfair advantage of, or be detrimental to, distinctive character or reputation of the Tullamore DEW mark.

In order for an opposition to succeed on this ground, the opponent must prove that the Applicant does not have due cause to use the mark. The use of the Applicant's family name, Lynch's, the name of the location, Tullamore, and a reference to the type of product the business is producing, Brew, were found to constitute due cause to use the mark. Therefore, it was not necessary to consider whether the use would cause damage or detriment to William Grant. Accordingly, the opposition under this ground was also dismissed.

c) Use of the mark is liable to be prevented by virtue of the law of passing off.

In the absence of any likelihood of confusion or association between the respective marks the Controller failed to "see how there could be any misrepresentation as to the provenance of the Applicant's goods by virtue of the use of the said trade mark". The basic ingredients of an action for passing off had not been established and the opposition based on this final ground was dismissed.

It is open to William Grant to appeal this opposition dismissal to the Irish High Court. This decision turned on the observation by the Controller that the word Lynch's was the inherently distinctive element of the Applicant's mark as opposed to Tullamore which was considered to be the most distinctive element of William Grant's renowned Tullamore DEW mark. In general, place names are not easily registered as trade marks as they are considered descriptive and/or devoid of distinctive character. However, the Controller acknowledged that Tullamore, "despite being a geographic location, has acquired substantial distinctiveness in respect of whiskey products by virtue of the use made of the mark". Therefore, although the Controller ultimately found in favour of registration, arguably, the content of the decision is a cautionary reminder to any future applicant seeking to register a trade mark which relies on a renowned place name as a distinctive element.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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