EUIPO OPPOSITION Decision No. 079 509 (24/02/2020)
Scottish distillery Ardbeg has been successful in defending its brand before the EU Intellectual Property Office (EUIPO). The distillery was first founded in 1815 and its trade mark has been protected in the UK since 1911.
An individual from Liechtenstein filed an application for the mark AlbergWhisky covering “alcoholic beverages (except beer)” in Class 33 and “Food and beverage treatment” in Class 40.
Ardbeg distillery owner and LVMH subsidiary Macdonald & Muir, also known as The Glenmorangie Company, filed an opposition against this application based on EU mark ARDBEG covering “whisky; wines, spirits and liqueurs”.
A trade mark opposition is successful if there exists a likelihood of confusion on the part of the public. In evaluating this, the EUIPO compares the goods and services covered by the marks and then compares the signs themselves.
Here, the goods and services were found to be partly identical and partly similar to at least a low degree. In particular, “food and beverage treatment”, covering activities such as preservation of food and drink and processing services, was held to be similar to a low degree to “wines, spirits and liqueurs”.
This is firstly because they can have the same providers, since the companies responsible for the production process can be the same as those that produce the finished goods. Secondly, they are complementary in that processing is necessary in the production of alcoholic beverages.
On this point, the decision is a reminder that, when faced with the manufacturing service and the manufactured product, consumers can easily assume a common commercial origin.
When looking at the signs, ARDBEG and AlbergWhisky were found to be aurally similar to a high degree and visually similar to an above average degree. The EUIPO highlights that the non-distinctive term “whisky” aside, the only differing letters and sounds are in the middle of the signs, thus less noticeable.
Due to the unitary character of the EU trade mark, a likelihood of confusion for only part of the relevant public of the EU is sufficient to reject the application.
The fact that Ardbeg is a location on the southern coast of the Scottish island of Islay and that Arlberg is a massif in Austria is irrelevant because the names are meaningless for a substantial part of the relevant territory (such as for a substantial part of the French-, Italian- and Spanish- speaking part of the public).
The comparison of Ardbeg and AlbergWhisky led the Opposition Division to conclude that the relevant consumer will perceive AlbergWhisky as a sub-brand, a mere variation of Ardbeg, configured in a different way according to the type of goods or services that it designates.
With regards to the way products are marketed, it is indeed common practice for businesses to create sub-brands deriving from their main mark by adding verbal or figurative elements. As such, due to the descriptive nature of “Whisky” and the similarity between Ardbeg and Alberg, it is conceivable that consumers may perceive AlbergWhisky as being a whisky range offered under the primary brand Ardbeg.
If there exists a possibility that the public would make a connection between the proprietors and confuse them, there is likelihood of indirect confusion or association and this is sufficient to bar registration of the mark.
Ultimately, consumers may have believed that Ardbeg had developed a new product/service line named AlbergWhisky, and thus confused the origins of the goods or services by assuming that they come from the same or economically-linked undertakings.
This is owing to the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.
The Applicant was unrepresented and has not defended the opposition.
- When faced with the manufacturing service and the manufactured product, consumers can easily assume a common commercial origin.
- Using a third party mark or a similar variation thereof and adding a descriptive term may lead consumers to perceive the mark as a sub-brand, configured in a different way according to the type of goods or services that it designates.
- From a legal perspective, this creates a likelihood of indirect confusion and gives the owner of the earlier mark grounds for an opposition or an infringement claim.