Average consumer will understand 'origin' as referring to origin of goods

Whyte & MacKay Ltd v Origin Wine UK Ltd ([2015] EWHC 1271 (Ch)) is the latest of Mr Justice Arnold's trademark rulings in the Chancery Division of the High Court of England and Wales.

The case began in February 2013 when Philippines-owned Scottish distillery Whyte & MacKay applied to register the word mark JURA ORIGIN as a UK trademark for "Scotch whisky and Scotch whisky-based liqueurs produced in Scotland in Class 33 of the Nice Classification.

Origin Wine UK Ltd and Dolce Co Invest Inc (which were associated companies) opposed on the ground that, given the similarity of JURA ORIGIN to their two earlier UK registered trademarks and the identity or similarity of their respective goods, there was a likelihood of confusion of the relevant consuming public. The registrations on which Origin Wine and Dolce relied were:

• the word mark ORIGINS, registered in 2001 for "alcoholic beverages (except beers); wine";

• the word mark ORIGIN, registered in 2002 for "wines; alcoholic beverages"; and

• the Community trademark depicted below, registered in 2010 for "alcoholic beverages (except beers), including wines".  

When put to proof, the opponents could show use of their marks only in relation to wine. In the opposition proceedings, the hearing officer held, among other things, that:

• the parties' respective goods were identical;

• the opponents' marks had not acquired enhanced distinctiveness through use; and

• each of them had only a moderate level of distinctiveness.  

However, the hearing officer upheld the opposition, saying:

"... I believe that the marks are sufficiently similar that the average consumer would be directly confused. However, in case I am wrong on this it is also my view that, should the average consumer not mistake the marks for each other, the similarities in the marks and goods are such that it would lead the average consumer into believing that the applicant and the opponent are commercially linked and they are likely to assume that the products produced under the application have a common origin to those produced under the earlier mark. 

The situation is stronger in respect of the opponents’ [logo mark] in that the goods are identical and the marks have a degree of similarity such that the average consumer would be directly confused. Again should the average consumer not mistake the marks for each other, the similarities in the marks and goods are such that it would lead the average consumer into believing that the applicant and the opponent are commercially linked and they are likely to assume that the products produced under the application have a common origin to those produced under the earlier mark…"

White & MacKay appealed, arguing that:

• the hearing officer had not applied the principle of Medion AG v Thomson multimedia Sales Germany & Austria GmbH (Case C-120/04) with regard to whether the earlier mark had an independent significant role in the later applicant's mark;

• he had failed to establish the proper level of distinctive character of the respective marks;

• he had failed to compare them properly; and

• he had wrongly assessed the likelihood of confusion between them.

Arnold J allowed the appeal and said that JURA ORIGIN could proceed to registration. In his view:

• There had been an error of principle in the hearing officer’s approach in that he had failed at the outset to consider how the average consumer would understand the word ‘origin’ in the context of the relevant goods. The average consumer would understand the word ‘origin’ as referring to the origin of the goods, whether this meant their geographical origin or their trade origin. The word ‘origin’ was inherently descriptive, or at least non-distinctive, for the goods in issue.

• It could not be correct to assess the word marks and the logo mark as having precisely the same level of distinctiveness. On the evidence, the hearing officer had failed to take proper account of the significance of the absence from the mark JURA ORIGIN of anything resembling its vine-leaf device.

• As for the mark JURA ORIGIN, given that the average consumer would perceive the word ‘Jura’ as being distinctive of Whyte & MacKay's goods, the expression ‘Jura origin’ would be understood by the average consumer as meaning that the goods originated from the producer called Jura and the expression would be understood as a unit. Accordingly, the word ‘origin’ did not have an independent distinctive role in the mark JURA ORIGIN.

• It could not be said that the hearing officer should have concluded that the presence of the word ‘Jura’ in Whyte & MacKay's mark had represented a conceptual difference over the opponents' marks which had outweighed any similarities caused by the presence of the word ‘origin’. First, the evidence did not establish that JURA had been a well-known mark for Scotch whisky at the relevant date, but only that there had been use on a "reasonably substantial" scale.

• The JURA ORIGIN mark was not dissimilar overall to both the word marks and the logo mark. However, the hearing officer had failed to assess the likelihood of confusion properly. Standing back and considering the matter overall, there was no likelihood of confusion.

While the trademark is still on its way to registration and a possibility of an appeal cannot be eliminated, a swift survey of online whisky reviews suggests that Jura Origin whisky has been on sale for at least the past five years. One wonders whether - if Origin Wine truly believed that there was a likelihood of confusion - that company had contemplated bringing proceedings for trademark infringement or passing off. Without further information, it seems a little strange that this does not seem to have occurred.

Jeremy Phillips, IP consultant to Olswang LLP, London