The European Court of Justice’s decision in Medion (Case C-120/04) is one that can provoke vitriol among even the calmest of practitioners. That case involved an infringement action taken against the use of the mark THOMSON LIFE by Thomson, in the face of Medion’s earlier registration for LIFE. The court ruled as follows:
“ … where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein”.
That pronouncement, cast in broad but qualified terms, was at least in part aimed at preventing a practice directed at appropriating an existing registered mark merely by adding a company name to the front of it. But Medion can be mis-applied. Advocate General Mengozzi in his opinion in Bimbo Donuts more recently, in a wry use of understatement, put it this way:
“I detect some uncertainty in the case-law as regards the importance to be attached to the presence of the manufacturer’s name in a trade mark”.
So, how does one treat an application for or use of mark X + Y against an earlier mark Y in the relative grounds context, when X is a house mark?
The answer is “it depends”. But there are certainly sign-posts that can assist in making a judgment call. To this end, we must take notice when Arnold J rules on a similar scenario, in favour of the later party. Key in this case was the perception and impact of the secondary element (Y) in the eyes of the relevant consumers.
Whyte & Mackay applied to register JURA ORIGIN for Scotch whisky. The application was opposed by Origin Wine UK Limited and Dolce Co Invest Inc.
Origin relied on two earlier UK registrations for ORIGINS (alcoholic beverages (except beers); wine), and ORIGIN (wines; alcoholic beverages) (Word Mark).
Dolce relied on a CTM registration for the following mark covering alcoholic beverages (except beers), including wines (Logo Mark):
The Hearing officer upheld the opposition. Whyte & Mackay appealed.
Arnold J’s decision
White & Mackay appealed on five grounds. However, the appeal turned on Arnold J’s acceptance of Whyte & Mackay’s submission that the hearing officer misapplied Medion, causing the hearing officer to conclude incorrectly that consumers would not perceive JURA ORIGIN as a whole whose meaning was different to that of the individual words and that consumers would not perceive the word ORIGIN, in the context of the Jura Mark, as descriptive or non-distinctive.
Before descending into his findings, Arnold J reiterated the following principles from Medion (noting their recent confirmation by the Court of Justice in Bimbo SA v Office for the Harmonisation in the Internal Market (Trade Marks and Designs) C-591/12P):
- The likelihood of confusion is to be assessed by comparing the marks aurally, visually and conceptually as a whole. There are situations, however, where consumers perceive one word ((Y)) within a composite mark ((X) + (Y)) as having a distinctive significance independent of the composite mark, and accordingly, a likelihood of confusion can arise as a result of that word being contained in an earlier mark.
- This situation only applies in circumstances where the average consumer would perceive the word to have a distinctive significance independent of the composite mark as a whole.
- Even where the word has a distinctive significance independent of the whole, the finding of a likelihood of confusion is not automatic. Rather a global assessment of all relevant factors must be taken into account.
With the above in mind, Arnold J found that the hearing officer’s decision was flawed from the outset because the hearing officer failed to consider the meaning and impact of the word ORIGIN in light of the goods in question, namely Scotch whisky and whisky-based liqueurs, in the eyes of the relevant consumers. That is, in determining that the word ORIGIN had an independent distinctive significance, the hearing officer did not consider the average consumers’ perception of the Jura Mark as a whole and in determining the likelihood of confusion with the Word and Logo Mark, did not make a global assessment of all of the relevant factors, namely the impact and relevance of the goods in question.
Arnold J found that the word ORIGIN, in the context of Scotch whisky and whisky-based liqueurs, would point towards either a geographical or trade origin and therefore, was inherently non-distinctive and descriptive. Assuming that the hearing officer’s finding that consumers would not be aware of the geographical significance of the word “JURA” (namely, an island off the west coast of Scotland) was correct, Arnold J found that average consumers, in perceiving the Jura Mark as a whole, would understand that it conveyed that the goods originated from a producer called “JURA”. Despite the word ORIGIN comprising the whole of the Word Mark (and to a lesser extent, the Logo Mark, which comprised additional pictorial and typographical elements), Arnold J found that there was no likelihood of confusion because the word “ORIGIN”, as part of the composite Jura Mark, would not play an independent distinctive role in the eyes of the relevant consumers. The expression would instead be understood as a unit.
In taking into account the descriptive nature of ORIGIN in the later mark, the decision is in line with the recent decision of the UK Court of Appeal in JW Spear & Sons Ltd & Ors v Zynga Inc  EWCA Civ 290 (27 March 2015). In that decision, Lord Justice Floyd (Patten and Tomlinson LJ agreeing) recognized (in the infringement context) that “[i]f the average consumer is likely to see and understand the descriptive allusion in the sign, he is less likely to see it as indicating a connection with the proprietor of the mark or his goods” and “[t]he more obvious the descriptive meaning, the more power there is in this factor”. You can see the detailed note on Zynga from our London office here.
The outcome in Whyte & MacKay can be contrasted with Arnold J’s decision in Aveda Corporation v Dabur India Limited  EWHC 589 (Ch), in which DABUR UVEDA was successfully opposed in respect of certain goods. However, in that case the earlier mark AVEDA had the benefit of enhanced distinctiveness through use and promotion.