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.

Filed Under: trademark, uk, whisky

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  1. icon
    timmaguire42 (profile), 9 Mar 2017 @ 8:34am

    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.

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