alexandr-vlassyuk-shutterstock-com
Alexandr Vlassyuk / Shutterstock.com
11 May 2015Trademarks

English High Court reverses whisky trademark ruling

The English High Court has granted whisky maker Whyte and Mackay a trademark for its Jura brand, despite the UK Intellectual Property Office (IPO) ruling that it was too similar to marks owned by drinks maker Origin Wines, and Dolce Co Invest.

Judge Richard Arnold, presiding over the case, said there was no “ likelihood of confusion” between Whyte and Mackay’s trademark application for the phrase ‘Jura Origin’ and two UK registered marks owned by Origin Wine and one Community trademark (CTM) owned by Dolce Co.

In his ruling issued on Wednesday (May 6), Arnold said the ‘Jura Origin’ trademark can now proceed to registration.

Whyte and Mackay applied to register the mark at the UK IPO in February 2013.

Origin Wine opposed the application arguing it was too similar to two trademarks it owned for ‘Origins’ and ‘Origin’. The marks were registered in 2001 and 2003 respectively.

Dolce Co also opposed the application and claimed that Whyte and Mackay’s trademark was too similar to its own CTM, a logo showing a vine-leaf on top of the phrase ‘Origin Wine’.

According to the judgment, Origin Wines and Dolce Co are “associates”. The two oppositions were consolidated by the IPO in 2014.

In July 2014, the IPO rejected Whyte and Mackay’s trademark application. Whyte and Mackay appealed against the decision.

In his judgment, Arnold said that the IPO’s hearing officer, George Salthouse, did not “ fully analyse the level of visual, aural and conceptual similarity” between the respective marks.

He said: “I consider that the expression ‘Jura Origin’ would be understood by the average consumer as meaning that the goods originated from the producer called Jura. Accordingly, the word ‘Origin’ does not have an independent distinctive role in the Jura mark.”

On Dolce Co’s CTM, Arnold said that the vine-leaf images distinguish the CTM from Whyte and Mackay’s ‘Jura Origin’ application.

Neither Whyte and Mackay nor Origin Wine had responded to a request for comment at the time of writing.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk