UK Intellectual Property Office Refuses Beer Brewery's Request To Block Trademark Application For Whisky

from the mmmm-whisky dept

For as long as I’ve spent time screaming about trademark issues in the alcohol industry in these here pages, I’ve repeatedly made the point that trademark laws the world over should be more nuanced when it comes to defining competitive marketplaces. The alcohol industries are perfect examples of this, with a fairly discerning customer base that is quite capable of knowing the difference between a beer and a single-malt whisky, or a bottle of wine, or the horror upon humanity that is sangria. But too many governing IP offices and courts take the lazy route of lumping these micro-markets into a macro-market for the purposes of claiming competition in trademark disputes.

But the courts don’t always get this question wrong. Some, in fact, do bother to take the time to weigh the sophistication of the likely buyers of products within a marketplace when rendering a decision on a trademark dispute. And that seems to have been at least in part at play in a recent decision to allow a trademark to proceed for a whisky brand despite the objection raised by a beer brewer.

Jim McEwan, 68, was stunned when the beer giant threatened to derail his plans for a self-titled whisky business on the Isle of Islay where he lives. Brewer Charles Wells, which owns the McEwan’s range of Scots beers, objected to Mr McEwan registering his own name as a trademark.

The brand’s trademark agents said the application overlapped with their registered trademark “McEwan’s” and people could confuse the two businesses. They said Mr McEwan could benefit from this confusion, and called for his application to be blocked.

Now, Jim McEwan was helped in this dispute at least somewhat by the fact that he’s basically Whisky Jesus in Europe. In the circles of the whisky industry, McEwan is a well-known name, having worked in the industry for decades, and having even been named to Whisky Magazine’s Hall of Fame. Those of us who drink real whisky aren’t any more likely to confuse a whisky with his name on it with a beer than we would confuse it with a gym shoe. That his trademark application was for branding consisting of his own surname made the dispute slightly more laughable, but it doesn’t appear that was the court’s focus in dismissing Charles Wells’ objection to the trademark application.

Now the UK Intellectual Property Office (IPO), which rules on trademark disputes, has found in Mr McEwan’s favour after rejecting suggestions the two brands were likely to be mistaken for each other. In a written ruling, trademark hearing officer George Salthouse said: “The average consumer is well versed in discriminating between individual’s names, particularly a surname and a forename and surname. I accept the mark in suit may bring the opponent’s mark to mind, but I do not believe it will form a link that would affect the consumers’ economic behaviour or damage the opponents’ mark by tarnishing or blurring.”

The only way that statement makes sense is if the court has faith that the buying public for whisky will differentiate it from beer. Which, you know, of course they will. People who are regular buyers of whisky are complete snobs about it. I know this, because I am one. It’s quite refreshing to see a court take the actual lack of confusion into account in a trademark dispute, rather than falling back on facile declarations of overly-broad marketplaces.

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Comments on “UK Intellectual Property Office Refuses Beer Brewery's Request To Block Trademark Application For Whisky”

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Wendy Cockcroft (user link) says:

Re: Re: Re:3 Re:

I went to Bushmills, Northern Ireland, to the distillery, which is open to the public. They had a tasting table at which they explained what it is we’re tasting in the whisk(e)y. Irish is pure filtered water + sherry barrel residue, Scotch is filtered through peat, then stored in sherry barrels, and Bourbon is stored in new barrels, so what you’re tasting is timber.

timmaguire42 (profile) says:

It always bugged me that the brother and sister team of Sarah and Paul McDonald can’t open a burger joint using their ancient family name because some schmuck named Kroc got there first. Unlike Copyright and Patent, which are supposed to protect things that are new to encourage the creation of more things that are new, Trademark reaches into the public domain and takes things out and hands them over to private interests.

Trademark law should extend strong protection only to fanciful marks. Words that are part of normal language should get very weak protection applied only to the specific product. If that. Want strong protection? Create something new. Don’t steal from the public.

Andrew D. Todd (user link) says:

Re: Re:

A properly qualified Scottish name adds particles and occupation-names to avoid confusion, for example, the hero of Robert Louis Stevenson’s Kidnapped is Alan Breck Stewart of Appin, that is, Alan of the house of the hereditary bailiffs of the Appin branch of Clan Stewart. Another example would be Donald Smith Grant of Strathspey. That is, of the family of the hereditary blacksmiths of the Strathspey branch of Clan Grant. As Donald Smith, he went out to Canada to join the Hudson’s Bay Company, and eventually founded the Canadian Pacific Railroad, and finally became Lord Strathcona, on the other side of Scotland. Jim McEwan can refer to himself as Distiller James McEwan of Islay, or even Distiller Shemus McEwan na Islay [dog-Gaelic], which has a nice highland ring to it, and do business under that name.

A McDonald can be a McDonald of Keppoch, or a McDonald of Glengary, or a McDonald of Clanranald, or a McDonald of Glencoe, or a McDonald of Coll, or a McDonald of Sleat, or a McDonald of about seventy other sub-clans. I had to look Sarah and Paul McDonald up on Google, because I had never heard of them. Ray Kroc bought McDonald’s as a going business from Richard and Maurice McDonald. The McDonald brothers had worked out the essential fast-food system, and they came to Kroc’s attention, when he realized that his company had sold the McDonalds enough milk-shake mixers to make forty milk-shakes simultaneously. So he went to see what kind of restaurant could possibly serve food on that scale. Of course, what Kroc found on arrival was an ancestral form of the drive-through. People came in their cars, got their food, and drove away again. Kroc discovered that the McDonald brothers had essentially satisfied their ambitions, and were not interested in taking the business national. So he bought it from them. The name went with the business, and a set of customer expectations.

Market confusion extends to anything which which a business might reasonably be believed likely to expand into. Beer breweries have historically owned or franchised chains of bars, and and in fact, the big English breweries were to be commended for insisting that the beer in their “tied houses” be made from grain, and not from sulfuric acid, a common practice of the independent bartender in the nineteenth century. Almost any food or consumable item which is sold in a retail establishment is a good candidate for being produced in-house, and the ultimate customer cannot easily know what is in fact produced in-house. I know that there is, in fact, Jack Daniels brown (Dijon) mustard. I bought a case from Amazon a few years ago, and consumed it, and it was decent enough stuff. This seems a strange connection, but I have an old advertisement from the English brewer Guinness celebrating the different kinds of English cheeses (viz: Cheddar, Stilton, Cheshire, Wensleydale, Leicester, Dorset-shire Blue Vinny, Lancashire). If they sell you a ham-and-cheese sandwich in one of their pubs, that implies some mustard to go with it.

The Ronald McDonald House system (guest houses for people who have sick children in the hospital) is a charity funded by McDonald’s, and this falls withing the scope of reasonable expectation. The character of Ronald McDonald used to be a McDonald’s mascot. If a charitable building labeled Wendy’s Mansion were to suddenly appear on the other side of the hospital from Ronald McDonald House, I would have very little doubt about who was paying for it.

The Wanderer (profile) says:

Likelihood of confusion

I’m not sure I’m convinced.

Is it plausible that someone who knows about the McEwan’s beer brand could, upon seeing a McEwan’s whiskey brand, reasonably conclude that the company behind the former has expanded into additional types of alcoholic beverage?

To my eye, that seems like an entirely plausible scenario – and one which looks like a clear case of consumer confusion. The only question is one of whether it rises to the level of confusion which trademark law is intended to prevent.

Other details of the branding – such as the font, colors, and logo used – could make such confusion significantly less likely, such that having the name used by two different entities in that way would not be a problem – but the difference in product alone is not likely to be enough to avoid that confusion, IMO.

(Mind, I agree that shutting down someone’s ability to use his own name in commerce is undesirable, and that there are a number of problems with trademarks as currently implemented. I’m just not convinced that the dividing lines of markets prevent consumer confusion as effectively as this article, and its predecessors on similar subjects, seem to believe – or that relying entirely on those lines wouldn’t result in problems as bad as the ones the current situation creates.)

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