Austin Nichols unsuccessful in invalidation and opposition actions

In Lodestar Anstalt v Austin Nichols & Co Inc, the acting controller at the Trademark Registry has rejected Austin Nichols & Co Inc's applications for declarations of invalidity of two trademarks. The controller also dismissed Austin's oppositions against applications to extend protection to Ireland of two international registrations.

Lodestar Anstalt is the registered proprietor of four trademarks consisting of or including the words 'wild geese'. Two of the registrations were secured by Lodestar's predecessor in title under Irish trademark legislation; the other two were international registrations for which a request for extension to Ireland had been made. Austin Nichols applied for declarations of invalidity in respect of the Irish-registered marks and opposed the extension to Ireland of the international registrations.

Austin relied on its proprietorship of the trademark WILD TURKEY and other trademarks incorporating that name. It was accepted that these marks constituted 'earlier trademarks'. In comparing the marks, the acting controller focused on the overall identity between them, rather than on individual points of similarity or dissimilarity. The controller was of the view that the marks looked and sounded similar to a certain extent, but did not regard them as highly similar either visually or aurally. He held that conceptual comparisons must be based on the essential and immediate message given by each of the respective marks. Notwithstanding that both WILD TURKEY and WILD GEESE connote birds in a wild state, the controller considered that they were conceptually different, having regard to the likely impression that would be formed by each of them on the mind of the average consumer.

As regards the distinctiveness of the earlier trademarks, the controller was of the view that the evidence did not support a claim to an enhanced level of distinctiveness over and above that which is inherent in the mark itself. With regard to the likelihood of confusion (including confusion by association), he concluded that the visual, aural and conceptual differences between the trademarks were so obvious that a person exercising reasonable care would be unlikely to select or be served a Wild Geese beverage in place of Wild Turkey. The controller held that the trademarks did not look or sound sufficiently similar to make direct confusion between them a real likelihood. As regards the possibility of conceptual confusion, the controller concluded that the impression likely to be left on the mind of the average person by exposure to the trademark WILD TURKEY was so strong as to make it unlikely that he or she would remember it in a vague way as "wild something" or "some wild bird". Moreover, the controller found that the average person would not assume an association between WILD TURKEY and WILD GEESE because of their alleged conceptual connection.

Austin also sought invalidation of the registrations on the basis that:

• the trademark WILD GEESE may connote an Irish origin to certain consumers; and
  
  
• its use in relation to non-Irish goods would therefore serve to deceive such consumers.

The acting controller disagreed. He indicated that there is a difference between evoking (and even appealing to) a sense of Irishness on the one hand, and expressing a statement of fact (eg, "these goods are of Irish origin") on the other. In his opinion, WILD GEESE clearly fell within the former and was not of such a nature as to deceive within the meaning of the Trademarks Act 1996.

The acting controller thus allowed the Irish-registered marks to remain on the register and the international registrations to proceed to final protection.

Patricia McGovern, DFMG Solicitors, Dublin