Empire State (of mind) – noisy bars, brand shortening and obscured presentation – Mr Purvis QC speaks!

As you will know from previous posts (see here and here), when Appointed Persons speak, we listen!

One of our favourites, it has to be said, is Mr Iain Purvis QC. He has a knack of getting straight to the point, with clear and memorable turns of phrase. Indeed one often finds oneself (if one is feeling particularly onesy) reading these decisions and nodding to oneself in agreement. As a result, these statements tend to be repeated in later decisions by way of authoritative or persuasive support. For example, Mr Purvis QC’s useful discussion of the difference between direct and indirect confusion in the LA Sugar decision (here) is referred to and relied on regularly in decisions from the UK registry and the courts.

Mr Purvis QC’s most recent decision, Case O12017 (available here), provides another case in point.

The case involved an appeal from a decision of a Hearing Officer of the UKIPO. The applied-for marks were two EMPIRE logos (for gin and vodka, respectively):

The relative ground relied on (which was the only ground at issue on appeal) was an earlier registration for EMPIRE STATE SPIRITS for goods including gin and vodka. This ground was dismissed at first instance. In seeking to overturn that decision, the opponent argued as outlined below

Concept of the earlier mark

The name EMPIRE STATE SPIRITS would likely be associated with Jay-Z and Alicia Keys’ song “Empire State of Mind” (rather than the Empire State Building), which would serve to increase the risk of confusion.

Mr Purvis QC was not convinced by this argument. The song did not detract from the earlier finding that “Empire State” is a specific and separate concept from “Empire”.

Aural use

These kinds of drinks are ordered in bars which amplified the risk of confusion (a mark could be misheard).

Mr Purvis QC considered that this point had been taken into account by the Hearing Officer. He concluded: “Given the relative ease with which one can aurally distinguish the words 8 ‘EMPIRE’ from “EMPIRE STATE SPIRITS’, I do not consider that the ‘noisy bar’ point is particularly compelling”.

Shortening of marks

The opponent argued (a quite commonly relied on point) that EMPIRE STATE SPIRITS would be shortened to EMPIRE by consumers and confusion would therefore be bound to occur. The opponent referred to STELLA ARTOIS being shortened to STELLA by way of example.

Mr Purvis QC did not accept this as a valid argument. He was prepared to accept that some famous marks are commonly shortened by the public, but there was no general rule to this effect. He used RED STRIPE as an example which is not shortened to “RED” or “STRIPE”. In a passage that will no doubt be relied on in future cases, he stated that:

“When performing a comparison between marks, in my view it is therefore not legitimate to `ask whether there might be confusion if one of the marks were changed (whether by shortening or otherwise) into something different. The only circumstance in which the argument might be valid would be where the mark had acquired substantial distinctiveness through use and the proprietor could therefore demonstrate as a matter of fact that the public associated the mark with a particular shorthand version of it. Obviously in the present case, where there is no evidence of use at all, this does not apply”

Obscured presentation

The opponent argued that the earlier mark EMPIRE STATE SPIRITS would “not be likely to be displayed with all its component words visible”, which might increase the likelihood of confusion.

Mr Purvis QC gave this short shrift:

This seems to me an irrelevant point. Any consideration of likelihood of confusion must start from the proposition that the average consumer is aware of the earlier mark as a whole, not some single part of it. One cannot therefore start from the proposition that the average consumer has only seen the single word ‘EMPIRE’ on display. The possibility of defective recollection must be taken into account, but that is a different matter, and the Hearing Officer plainly did take it into account

Earlier cases

The opponent referred to the CRISTALINO case (see our report here). In that case, the mark CRISTALINO in respect of sparkling wines was held to cause confusion with the earlier mark CRISTAL (known in respect of champagnes).

Mr Purvis QC had little difficulty distinguishing the CRISTALINO case, as – among other things – CRISAL “had a very high reputation, which added to the risk of confusion”.

The appeal was dismissed.

Of interest to Australian readers will be the reference to the impact of the level of fame of the opponent’s mark. Whilst such a point is only rarely considered (if at all) in section 44 cases (which is, at least in a statutory sense, the equivalent of the ground considered in the Empire State case), the findings as to shortening of marks by consumers might be helpful in a given case in an opposition based on section 60.