Bacardi trademark hammered by absinthe brand
The UK Intellectual Property Office (IPO) has denied an application from the largest family-owned spirits company in the world to register whiskey trademark 'Angel’s Envy'.
The decision was delivered by the IPO on Tuesday, February 6.
In March 2015, Bacardi & Company applied to register the mark ‘Angel’s Envy’ with the European Union Intellectual Property Office. It was converted to a UK trademark in April 2017, covering North American whiskey and related drinks in class 33.
La Fée, a distiller and manufacturer of absinthe, filed an opposition, claiming that Bacardi’s mark was too similar to its own mark ‘Envy’. The ‘Envy’ mark, EU trademark number 013,711,321, was registered in 2015 and covers spirits and drinks containing absinthe, in class 33.
Bacardi denied “any similarity between the marks” that would lead to confusion and claimed that there was no similarity between absinthe, or alcoholic beverages containing absinthe, in La Fée‘s goods and its own goods.
However, the spirits company “made no other comment” on the similarity of other goods included in the class, such as spirits.
Despite the additional word in the contested mark, the office found that the marks were “visually, aurally and conceptually similar to a medium degree”. The IPO also found the goods covered by the marks to be identical.
Although the IPO found that “there is no likelihood of direct confusion”, due to the additional word in the contested mark, it did find that there is a likelihood of indirect confusion, “as if the consumer does not mistake one mark for the other, they are likely to believe that the respective goods come from the same or economically linked undertakings”.
The IPO concluded that consumers may believe ‘Angel’s Envy’ to be a “variant flavour” of La Fée’s beverages.
Bacardi’s application to register ‘Angel’s Envy’ was refused and it was ordered to pay £600 ($837) to La Fée for costs incurred.
Bacardi said it will appeal against the decision as it doesn’t believe there is any likelihood of indirect confusion or any prospect of any reasonable consumer being misled.
“Bacardi and La Fée have been involved in various similar registry proceedings in other jurisdictions and Bacardi has recently prevailed in both France and Spain. We are therefore confident that we will also prevail in the UK on appeal,” said the spokesperson.
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