15 June 2018Trademarks

Irish distillery successfully opposes brewery’s TM application

An Irish distillery has successfully opposed a trademark application covering beer at the UK Intellectual Property Office (IPO).

The IPO announced its decision on Tuesday, June 12.

In December 2016, UK-based brewery Recognise applied to register the mark ‘Mideltone’ for classes 32 and 33, which covers beer, the process of making beer and other alcoholic beverages.

Irish Distillers, which is part of the Pernod Ricard portfolio of distilled alcoholic beverages, opposed the trademark in March 2017 on the ground that the applied-for mark could be confused with the distillery’s own trademark ‘Midleton’.

France-based Pernod Ricard owns several well-known brands of spirits, including Absolut Vodka, Malibu rum and Jameson whiskey.

Irish Distillers was granted the ‘Midleton’ trademark in 1998, covering alcoholic beverages except for beers.

The distillery argued that Recognise’s application was an attempt to “benefit from the power of attraction, reputation and prestige of the earlier mark, and to exploit those rights without being required to make autonomous efforts in that regard”.

Recognise responded by filing a counterstatement denying the claims. Only Irish Distillers filed evidence in these proceedings.

Recognise also said that the applied-for trademark covers beer, which concerns a different marketplace of drinkers to Irish Distillers’ goods.

However, while beer is excluded from the goods covered by Irish Distillers’ mark, the IPO said that this does not avoid similarity between the goods.

The IPO added that the products are likely to share a space in a supermarket aisle and may be in competition.

“The intended purpose of both is a pleasurable drinking experience, which may include the intoxicating effects of alcohol,” said the IPO.

On the visual comparison, Recognise said that the marks are dissimilar because its applied-for mark has two e’s whereas Irish Distillers’ mark only has one e.

However, the IPO said that while this is true, “the marks share the same three letters, the middle two letters are reversed and there is an ‘e’ at the end of the contested mark which is not present in the earlier mark”. As a result, it said the visual similarities outweigh the dissimilarities.

The IPO upheld most of Irish Distillers’ opposition. However, Recognise was allowed to register its mark for manufacturing beer in class 32.

Recognise was ordered to pay Irish Distillers £1,200 ($1,600).

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