A company's brand and reputation is often one of its most important assets and can often make or break a business. With any business it is therefore crucial that trade marks and branding are chosen carefully, registered where appropriate, and enforced against competitors where necessary.
The UK brewing industry, which includes over 2,000 independent breweries, has seen some high profile trade mark disputes in recent years. Previous blog posts have covered the importance of intellectual property to breweries and looked at some of the most public IP disputes involving breweries.
Despite the pandemic, trade mark disputes have continued, with there having been some interesting cases where breweries have applied for trade marks, only to be opposed by what may be seen as non-direct competition; specifically a distillery and a non-alcoholic drinks manufacturer.
While it hasn't been the easiest year for the industry due to the various lockdowns and Covid restrictions in place, it does show that brands are still keen to apply for trade marks to protect their brands, and that other companies are willing to oppose them where they consider the applications are a threat to their own brands.
Brewdog v Doghouse Distillery - Scottish Brewery in the Doghouse again?
One beer brand that seems to show up quite often in relation to intellectual property disputes is Brewdog.
In 2019, Brewdog applied for a trade mark for a logo consisting of "the word DOGHOUSE presented in a straight line and in the form of bold block letters below a picture of a fourlegged animal as a solid white shape on a black shield, the picture as a whole giving the impression of having been spray painted".
The Doghouse name is used for Brewdog's craft beer hotel chain, but the services applied for in the trade mark specification were wider, and included brewing, food and drink, and entertainment related services, as well as hotel accommodation related services.
This application was opposed by Doghouse Distillery, who owned an existing trade mark for a logo consisting of "the word DOGHOUSE presented on a curve, and as if stencilled, in block capitals beneath a relatively detailed picture of a bulldog-type dog's head".
This earlier trade mark was registered for goods including alcoholic drinks and services for providing food and drink.
Visual representations of the trade marks can be seen at paragraph 46 of the decision- Trade Mark Inter Partes Decision O/581/20 (ipo.gov.uk) .
The opposition was also based on section 5(2)b of the Trade Marks Act 1994 ("TMA") - and the opponent argued that the marks and goods/services covered were similar, and so there would be a likelihood of confusion on the part of the public if Brewdog's application was registered.
In relation to the goods and services, the tribunal found that some of the services applied for were identical to the earlier mark (with both covering "food and drink" services) and others highly similar, for example when comparing services for brewing and "alcoholic drinks" and "pubs" covered by the earlier mark.
Importantly, when considering the intended use of the Doghouse brand by Brewdog, the tribunal also found similarity between the hotel and accommodations related services and "services for providing food and drink" and "pubs and bars" covered by the earlier mark - as the trade channels will frequently overlap in that hotels will provide food and drink, and will normally have a bar, while pubs often offer rooms.
There was however also no similarity found between some of the other services covered by the application, including the applicant's canning and bottling related services,
In relation to the trade marks, similarity to a medium degree was found as a result of:
- The word DOGHOUSE appearing in both, with only differences of minor significance in their appearances e.g. typefaces;
- While both feature images of animals, one was a detailed picture of a dog's head, and the other was of a four-legged animal with little detail (although the average consumer would likely see it as a stylised representation of a dog);
- The logo in the application featured a shield outline, but the earlier trade mark had no corresponding element.
After this comparison, the tribunal found no likelihood of direct confusion due to there being sufficient visual differences between the marks (mainly the differences in the representations of the dogs) to avoid them being mistakenly recalled as each other.
The tribunal however found that there was a likelihood of indirect confusion, where the average consumer realises the marks are not the same, but puts the similarity that exists between the marks and the goods and services down to the responsible undertakings being the same or related. This was found in respect of goods and services found to be identical or similar to at least a medium degree.
The opposition therefore succeeded in relation to those goods, which crucially included brewing services, services for providing food and drink and hotel/accommodation services applied for by Brewdog.
This decision shows that even where figurative marks are visually different (here to a significant degree), likelihood of confusion may still be found as a result of the comparison as a whole, such as where the word element is reproduced entirely and similarity is found between the goods/services applied for.
The opposition also succeeded here even where the goods/services were found to be only of medium similarity e.g. hotel services vs pubs/bars. A careful review of existing brands and trade marks that are outside of direct competition in the same goods/services is therefore advisable before deciding on a new brand name or a sub-brand in relation to an arm of the business e.g. Brewdog's hotel chain here.
Coast Beer Co vs Coast Drinks - It's always better to check that the Coast is clear.
Another recent UKIPO Tribunal decision concerned an application to register the words "COAST Beer Co" as a trade mark for the following goods in Class 32: Craft beer; Beer; Alcohol-free beers; Craft beer; Craft beers; De-alcoholised beer; De-alcoholized beer; Low alcohol beer; Low-alcohol beer; Non-alcoholic beer; Non-alcoholic beers.
The opponent here held an earlier trade mark for "COAST", for various non-alcoholic goods including tonic water and other mixers, in Class 32.
The opposition was also based on section 5(2)b of the TMA - and the opponent argued that the marks and goods covered were similar, and that there was a likelihood of confusion.
When comparing the goods, the tribunal found identity or high similarity between "Alcohol-free beers; De-alcoholised beer; De-alcoholized beer; Non-alcoholic beer; Non-alcoholic beers" applied for and the opponent's goods "Non-alcoholic beverages" and "Non-alcoholic drinks"; with the latter goods covering a wide range of non-alcoholic beverages including all the non-alcoholic versions of beer.
The tribunal also found a medium degree of similarity between "Craft beer; Beer; Craft beers; Low alcohol beer; Low-alcohol beer" and "Non-alcoholic beverages" and "Non-alcoholic drinks" (which include non-alcoholic beer, as above). This similarity was found as a result of:
- An overlap in purpose; in that the goods offer pleasurable drinking experiences or quench thirst;
- A sharing of the same method of use (drinking) and similar receptacles (bottles, cans etc);
- The goods may be sold in reasonably close proximity e.g. on the same aisle in a supermarket;
- The goods may frequently be made by the same producers;
- The goods are marketed or consumed at similar places, such as bars, public houses and restaurants, so there will be an element of competition between these goods.
When comparing the words forming the trade marks, the tribunal found that the words "Beer Co" in the mark applied for are likely to be seen as descriptive by the average consumer, with "COAST" being the dominant element. The tribunal therefore found a medium degree of visual and aural similarity between the marks, and a high degree of conceptual similarity.
Following the finding of high or medium similarity between the marks and the goods, the Tribunal concluded that the average consumer is likely to mistake the applicant's and the opponent's marks for one another, and so found a likelihood of confusion and the Opposition succeeded.
Even where there is not an exact crossover in goods covered by the marks (e.g. here the application covered alcoholic beer vs the earlier mark covering non-alcoholic drinks), companies should consider carefully all of the existing brands out there, particularly in areas where the goods may be in competition or sold through similar trade channels.
This decision also shows how adding extra words that are merely descriptive or less distinctive e.g. 'Beer co' here, will not necessarily avoid a finding of similarity and likelihood of confusion with a word mark that is otherwise identical.
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Filing a trade mark is not always a straightforward process and the two recent cases above demonstrate how key it is to get the detail right to minimise the chance of a successful challenge or opposition.
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.