11 September 2018Trademarks

UKIPO rejects one opposition but accepts another in wine TM case

A wine wholesaler yesterday successfully defended its applied-for trademark against one opposition in the UK, before being defeated by another opposition to the same mark.

Clare Boucher delivered her decisions on behalf of the UK Intellectual Property Office (IPO).

Copestick Murray, a UK-based wholesaler of wine and other alcoholic beverages, applied to register ‘Silent Peak’ as a trademark covering wine, in class 33, in June 2017.

The mark was opposed separately by two UK-based alcohol companies.

The first, Spiritmen (doing business as Silent Pool Distillers), is a producer of gin and vodka. It owns an EU trademark for ‘Silent Pool’ (number 012,914,263), registered in 2014 in class 33 for alcoholic beverages.

Albury Vineyard, the second opponent, offers organic wines in addition to tours and tastings. The company owns a UK trademark for ‘Silent Pool’ (3,124,973), registered in 2015, covering wines and wine-based beverages in class 33.

In Spiritmen’s opposition, the producer argued that as the goods covered by its mark and Copestick’s applied-for mark are similar and the marks themselves are similar, there is a strong likelihood of confusion.

In response, Copestick noted the existence of other marks which begin with the word ‘Silent’ and cover identical goods to those covered by ‘Silent Pool’.

At the IPO, Boucher said that Spiritmen’s mark does not cover wine, or wine-based beverages other than spirits, so the goods covered by the marks are similar but to a low degree.

In relation to the word ‘Silent’ featuring in both marks, she said: “A finding of indirect confusion should not be made merely because the marks share a common element.”

Boucher added that the existence of other marks beginning with ‘Silent’ and covering the same goods is irrelevant.

She went on to find that the marks have a “good degree” of visual similarity and a “medium degree” of aural and conceptual similarity.

Overall, it is unlikely that consumers would mistake the goods covered by ‘Silent Pool’ for those covered by ‘Silent Peak’, Boucher said.

She rejected Spiritmen’s opposition and ordered the company to pay £600 ($782) towards Copestick’s fees.

However, in the other proceeding, Boucher upheld Albury’s opposition to Copestick’s applied-for mark.

Albury noted the identical nature of the goods (wine) covered by the mark and Copestick’s applied-for mark, which Boucher agreed with.

Boucher again found a good degree of visual similarity and a medium degree of aural and conceptual similarity between the marks.

She affirmed Albury’s argument that the average consumer attaches greater importance to the first part of the mark, and rejected Copestick’s claim that customers buying wine pay lots of attention due to the “considered” nature of the purchase.

Overall, Boucher determined that there is a likelihood of confusion resulting from consumers’ imperfect recollection of the marks, as they are both used in relation to wine and have a high visual similarity.

She advised that registration of ‘Silent Peak’ will be refused.

Albury’s opposition was successful, and Boucher ordered Copestick to pay £700 ($913) towards its fees.

Dale Campbell, of Trademark Tribe, who represented Spiritmen in its opposition, said that "unique brands are important in order to avoid confusion in the marketplace", and Spiritmen is happy with the overall result.

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