Opponent comes up Blanc
Once again, the difference between beer and spirits was a decider, notes Gavin Stenton. O/170/19, MONT BLANC WHISKY/MONT BLANC WHISKIES/MONT BLANC (Revocation), UK IPO, 2nd April 2019
O/170/19, MONT BLANC WHISKY/MONT BLANC WHISKIES/MONT BLANC (Revocation), UK IPO, 2nd April 2019
The UK IPO has resolved a dispute between two alcoholic drinks manufacturers over the use of the mark MONT BLANC. James Duncan Abbott (the Applicant) applied to register the mark MONT BLANC WHISKY/MONT BLANC WHISKIES in respect of “whiskies” in class 33, prompting Alpes Marques (the Opponent) to oppose relying on two senior registrations (both shown right). First, a UK designation under an International registration for the mark Mont Blanc covering “beers” in class 32; second, a UK registration for the mark Mont Blanc Whisky covering “alcoholic beverages, whiskies” in class 33. In response, the Applicant applied to revoke both marks for non-use.
The Hearing Officer (HO) criticised the “very poor” evidence of use submitted in relation to the Opponent’s MONT BLANC mark, in particular the lack of explanation of the products and invoices provided. The HO also criticised the failure to provide overall figures for sales or details of advertising in the UK, citing established case law. Nevertheless, the HO ultimately accepted that the Opponent’s MONT BLANC mark had been put to genuine use in the UK in relation to beers, and the revocation application was dismissed.
No evidence was provided of use of the Opponent’s MONT BLANC Whisky mark. The HO concluded that the proven use of the Opponent’s MONT BLANC mark in relation to beer was insufficient to establish genuine use of the Opponent’s MONT BLANC Whisky mark in relation to whisky. The Opponent asserted that it intended to open a whisky distillery, and had purchased equipment and raw materials for this purpose, even having had a label designed for the whisky bottles. However, in the absence of any advertising or indication of plans to launch a product imminently, the HO dismissed the evidence, upholding the revocation application.
The HO found the Applicant’s MONT BLANC WHISKY/MONT BLANC WHISKIES marks to be “highly similar, almost identical” to the Opponent’s MONT BLANC mark, noting that the descriptive element WHISKY/WHISKIES would have no distinctive value in relation to whisky-related products.
However, in comparing beer and whisky, the HO found there to be no similarity, citing past decisions comparing rum with wine and tequila with beer. This finding appears to be at odds with the majority of previous UK and EU decisions. Despite the significant similarities between the marks, with no similarity between the goods there could be no likelihood of confusion.
Having found there to be no likelihood of confusion, the HO concluded that the use of the Applicant’s mark in relation to whisky would not cause a misrepresentation and there could not therefore be passing off. The opposition was dismissed.
- In revocation proceedings, the burden lies with the proprietor to establish use. Proprietors should always accompany evidence of use with a witness statement explaining the evidence that has been filed
- The mere intention to launch a product at some unspecified time will not be sufficient to constitute genuine use of a mark, even if certain preparatory steps have been taken. Preparations to secure customers must be under way
- The assessment of the similarity between beer and various spirits remains a contentious topic, with some inconsistency in Office practice
Gavin Stenton is a Chartered Trade Mark Attorney, Partner and Solicitor at Penningtons Manches LLP
Co-authored by Michael Ridge, an Associate and Solicitor at Penningtons Manches LLP.
Penningtons Manches Cooper LLP