Hearing officer consolidates and rejects both opposition and invalidation in LOCH NESS dispute

United Kingdom
  • Ian William Henderson opposed Ness Scotland Limited’s application for LOCH NESS TONIC MADE FROM LOCH NESS WATER and device in Class 32
  • In response, Ness sought to invalidate Henderson’s LOCH NESS TONIC and LOCHNESS TONIC registrations 
  • The UK Intellectual Property Office consolidated the proceedings, finding in both the opposition and the invalidation that the shared elements of the parties’ respective marks were non-distinctive

In Decision BL O/030/19, a UK Intellectual Property Office (UKIPO) hearing officer has dismissed an opposition by Ian William Henderson and an application for invalidation by Ness Scotland Limited in relation to:

  • the LOCH NESS TONIC and LOCHNESS TONIC word marks;
  • the LOCH NESS TONIC MADE FROM LOCK NESS WATER and device mark; and
  • the LOCH NESS WATER GENUINE LOCK NESS BOTTLED DRINKING WATER and device mark.

The hearing officer found that among consumers ‘Loch Ness’ is inherently likely to designate the geographical origin of water and water-based beverages. Therefore, the trademarks were not “distinctively similar enough” to create any likelihood of direct or indirect confusion.

Facts

Henderson – who owns an earlier UK registration for the word marks LOCH NESS TONIC and LOCHNESS TONIC, covering non-alcoholic and alcoholic beverages in Classes 32 and 33 – opposed a later application by Ness for LOCH NESS TONIC MADE FROM LOCK NESS WATER and device in Class 32 for “carbonated non-alcoholic drinks; sparking water; still water; all produced from water drawn from Loch Ness”. Henderson argued that:

  • the respective marks were similar;
  • the respective goods were either identical or similar; and 
  • there was a likelihood of confusion under Section 5(2)(b) of the Trademarks Act 1994.

In its counterstatement, Ness conceded that the respective Class 32 goods were identical, but argued that:

  • Loch Ness is a famous fresh water loch in Scotland and therefore associated in the public mind with water;
  • ‘Loch Ness’ is descriptive of the geographical origin of Ness’s goods and a non-distinctive element of its mark;
  • the word ‘tonic’ is also descriptive of a kind of water product;
  • the device element of Ness’s mark is the dominant and distinctive element; and
  • there is therefore no distinctive similarity between the marks.

Ness also applied to invalidate Henderson’s registration on the basis that:

  • under Sections 3(1)(b) and (c) of the Trademarks Act, Henderson’s mark was devoid of distinctive character and descriptive of the goods in Classes 32 and 33 for the reasons given in Ness’s counterstatement; and
  • Henderson’s registration was similar to Ness’s earlier registration of LOCH NESS WATER GENUINE LOCK NESS BOTTLED DRINKING WATER and device in Class 32.

In his counterstatement, Henderson argued that:

  • while Loch Ness is a well-known loch in Scotland, it is not and will not be associated in the public mind with:
    • water;
    • water-based beverages; or
    • alcoholic and non-alcoholic beverages;
  • LOCH NESS TONIC as a whole was distinctive;
  • his registration was not similar to Ness’s earlier registration, particularly as Ness’s registration did not contain the word ‘tonic’; and
  • his registration included Class 33, which was not present in Ness’s earlier registration.

The UKIPO consolidated the opposition and invalidation proceedings.

Striking out of Ness’s Section 3(1) invalidation ground

Surprisingly, Ness filed no evidence in support of its invalidation application under Section 3(1) of the Trademarks Act to show that Henderson’s registration lacked distinctive character and was descriptive of the geographical origin of the goods. Ness requested permission to file belated evidence, but again failed to provide its reasons, resulting in the Section 3(1) grounds being struck out.

UKIPO decision

Opposition

The hearing officer held that the respective marks were not distinctively similar enough to create a direct or indirect likelihood of confusion, even when used for identical beverage goods. This was because the dominant and distinctive element of Ness’s mark was the device element, and the words ‘Loch Ness’ and ‘tonic’ were descriptive and weakly distinctive in relation to water or water-based beverages. The hearing officer therefore rejected Henderson’s argument that the word elements of Ness’s mark were the dominant and distinctive elements, citing the Court of Justice of the European Union decision in L&D SA v OHIM ([2008] ETMR 62). Although the marks were technically similar visually, phonetically and conceptually, the word elements were manifestly descriptive and the only distinctive component was Ness’s device element, which was not present in Henderson’s mark. Referring to the principle applied in Whyte & Mackay Ltd v Origin Wine UK Ltd ([2015] EWHC 1271 (Ch)), the hearing officer affirmed that if the only similarity between the respective marks is a common element which has low distinctiveness, it points against there being a likelihood of confusion.

With regard to how the average consumer purchases beverage products and the aural and visual similarities between the respective marks, the visual differences were sufficient to counter the phonetic identity between them. Given the low distinctiveness of LOCH NESS TONIC and the perceptions of the average consumer, the hearing officer held that there was no risk of confusion among a significant proportion of the relevant public because it was more likely that average consumers of beverages would simply assume that “someone else” is producing tonic beverages using water from Loch Ness.

The hearing officer was critical of Henderson’s evidence, comprising a witness statement from Henderson’s marketing adviser and Google search results, which were intended to establish that “Loch Ness” is not associated with beverages. The hearing officer noted that the witness was not independent because he was associated with Henderson, and was presented as expert evidence when Henderson had not applied for permission to file such evidence. The Google search results were also of little value because Henderson had not included the full results.

The hearing officer was also critical of Ness, noting that if the company had wanted to establish that “Loch Ness” is associated in the public mind with commercially available beverages, it should have filed evidence to support such a case.

Invalidation

The hearing officer noted that Ness’s invalidation application was now limited to its earlier registration because Ness had failed to file evidence in support of the Section 3(1) ground. He found that the respective goods in Class 32 were identical, but that the Classes 32 and 33 goods were dissimilar, noting the difference between soft drinks and alcoholic drinks. The hearing officer noted that these goods are not usually in competition because alcoholic drinks are consumed for the effect of the alcohol and there is no evidence that consumers expect soft drinks and alcoholic drinks to be sold by the same undertakings.

Regarding the similarity of the marks, the hearing officer used Ness’s own primary argument in the opposition against it; namely, that Ness’s device element was the dominant and distinctive element and that none of the words were distinctive. While there was a degree of overall visual, phonetic and conceptual similarity between the words ‘Loch Ness tonic’ and ‘Loch Ness water’, this created only a low degree of overall similarity and no distinctive similarity.

Therefore, the hearing officer rejected Ness’s invalidation application, finding no likelihood of confusion for similar reasons given in Henderson’s opposition. The hearing officer noted that even if he had found a likelihood of confusion, this would have not included the Class 33 part of Henderson’s registration.

Alternative outcome

Having rejected both the opposition and invalidation applications, the hearing officer went on to set out an alternative outcome, if he had considered the words “Loch Ness” to have a normal degree of distinctiveness. He explained that if he had accepted the word elements of Ness’s mark as the dominant elements and that ‘Loch Ness’ had a normal level of distinctiveness for beverages, he would have found a likelihood of confusion in Class 32. The words ‘Loch Ness’ would have made a more than negligible impact on the overall impression created by Ness’s mark. If ‘Loch Ness’ was distinctive, this would be sufficient for a likelihood of indirect confusion, and Ness’s invalidation application would have succeeded in Class 32. However, the hearing officer noted that Henderson’s opposition would still not have succeeded because – following successful invalidation – the remaining Class 33 specification would have been considered dissimilar to the Class 32 specification of Ness’s application.    

Comment

The hearing officer’s decision, although perhaps not wholly surprising, is interesting on various levels. It demonstrates the limitations of registering and enforcing marks which either are non-distinctive or have a low level of distinctive character. It is also a reminder of the importance of filing evidence to support an invalidation application or opposition. If Ness had filed detailed evidence showing that ‘Loch Ness’ is associated in the public mind with commercially available beverages, the outcome of the invalidation may have resulted in the cancellation of Henderson’s registration. Instead, neither party achieved their objectives. The decision appears well reasoned and explained, with the hearing officer going as far as to set out an alternative outcome.

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