Another fine Ness

23rd Apr 2019

Beverley Robinson looks into a case where an earlier mark made a difference. O/030/19, (Loch Ness Tonic), UK IPO, 16th January 2019.

Another fine Ness

O/030/19, (Loch Ness Tonic), UK IPO, 16th January 2019

Key points

  • Aural identity between marks is not conclusive, particularly where the dominant and distinctive element of a mark is a heavily stylised device 
  • It is important to fully substantiate any claim made in proceedings with supporting evidence

Ness Scotland Ltd (Ness) applied to register a trade mark in relation to non-alcoholic drinks and water products in class 32. The application was opposed by Ian William Henderson on the basis of his earlier trade mark registration for Loch Ness Tonic, covering identical goods in class 32 and alcoholic beverages in class 33. According to Mr Henderson, a likelihood of confusion existed as a result of the similarities between the respective marks and goods.

Ness claimed that: there was no distinctive similarity between the marks; the words LOCH NESS were non-distinctive, and the figurative element of the opposed mark was the dominant and distinctive element of that mark. Ness applied for Mr Henderson’s mark to be declared invalid on these grounds, and separately on the basis of an earlier registration for a LOCH NESS WATER logo. Ness submitted that, if Mr Henderson were right to claim that his trade mark is confusingly similar to Ness’s opposed mark, then it is also similar to Ness’s even earlier mark.     

No association

Mr Henderson claimed that: there is no association in the public mind between Loch Ness and beverages; the words LOCH NESS have a normal degree of distinctiveness for the goods at hand; and the combination of the words with Tonic is distinctive in any case. The Hearing Officer (HO) concluded that the words Loch Ness are inherently likely to designate the geographical origin of water beverages in the mind of average consumers, and that tonic is descriptive of a carbonated water product.

Interestingly, Ness’s invalidation under s3(1) of the Trade Marks Act 1994 was struck out because of a lack of supporting evidence. The validity of Mr Henderson’s mark was therefore not open to review by the HO, who had to consider the opposition on the basis that the mark was validly registered and had at least a minimum degree of distinctive character.

The HO accepted Ness’s argument that the figurative U device of the opposed mark was the distinctive and dominant element of that mark and, while the marks were aurally identical and conceptually similar, there was only a low degree of visual similarity. Overall, the marks were not similar enough to cause confusion.

Earlier right

Turning to the invalidation based on Ness’s earlier right, the HO considered that the distinctive and dominant element of Ness’s earlier mark resided in the figurative device and not the verbal elements. While the words LOCH NESS WATER and LOCH NESS TONIC created a degree of similarity between Ness’s earlier mark and Mr Henderson’s mark, there was only a low degree of overall similarity and no distinctive similarity. Despite the class 32 goods being identical, there was no likelihood of confusion and Ness’s application to invalidate was also rejected. 

It was always going to be difficult for Mr Henderson to argue a likelihood of confusion between his mark and Ness’s opposed mark, but not his mark and Ness’s earlier mark. Indeed, the HO confirmed that, had Ness’s primary arguments concerning the distinctiveness of Mr Henderson’s mark not been successful, the invalidation based on Ness’s earlier right would have succeeded.

Beverley Robinson is a Chartered Trade Mark Attorney and Associate at Walker Morris LLP