Whyte and MacKay Ltd v Origin Wine UK Ltd & Anor

Composite marks must be compared as wholes, with likelihood of confusion assessed globally. An element may retain an independent distinctive role only where consumers perceive it as independently distinctive. It does not do so where the composite expression forms a unit with a different meaning. An independent role does not itself establish confusion. For wine and Scotch whisky, ORIGIN is inherently descriptive or at least non-distinctive. A valid registration for that word therefore has only the minimum distinctive character required for validity. Where the only similarity is a low-distinctiveness common element, that points against confusion. Applying all relevant factors, the court found no likelihood of confusion and allowed registration.

Whyte and Mackay Ltd applied to register JURA ORIGIN for Scotch whisky and Scotch whisky-based liqueurs. Origin Wine UK Ltd opposed under section 5(2)(b) of the Trade Marks Act 1994, relying on the word marks ORIGIN and ORIGINS. Dolce Co Invest Inc relied on a logo mark containing ORIGIN WINE. A hearing officer acting for the Registrar upheld the oppositions in decision O/325/14 dated 23 July 2014.

The appeal concerned the approach to composite marks, the distinctiveness of ORIGIN, the comparison of the marks, indirect confusion and the effect of a low-distinctiveness common element. The central issue was whether either earlier mark created a likelihood of confusion with JURA ORIGIN.

Disposition. The appeal was allowed. The JURA ORIGIN mark could proceed to registration.

1. Appellate approach. An appellate court should show real reluctance to interfere with a multifactorial evaluative assessment, but may intervene where there is a distinct and material error of principle. That approach applies particularly where the decision does not involve findings of fact based on oral evidence. The court applied the guidance in REEF Trade Mark [2002] EWCA Civ 763, together with the observations in Fine & Country Ltd v Okotoks Ltd [2013] EWCA Civ 672, AH (Sudan) v Secretary of State for the Home Department [2007] UKHL 49 and MA (Somalia) v Secretary of State for the Home Department [2007] UKSC 49.
2. Composite marks. The marks must be compared visually, aurally and conceptually as wholes. Under Medion AG v Thomson Sales Germany & Austria GmbH [2005] ECR I-8551 and Bimbo SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:C:2014:305], a component may retain an independent distinctive role where it has distinctive significance independently of the composite mark. That principle does not apply where the components form a unit with a different meaning. Even an independent distinctive role requires a further global assessment; it does not automatically establish confusion.
3. Distinctiveness and meaning. ORIGIN is inherently descriptive or at least non-distinctive for wine and Scotch whisky because it refers to geographical or trade origin. The unchallenged Word Mark therefore had only the minimum distinctive character required for validity, applying Formula One Licensing BV v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:C:2012:314]. JURA was distinctive of the appellant’s goods, so JURA ORIGIN was perceived as a unit meaning goods originating from the producer called JURA. ORIGIN therefore had no independent distinctive role.
4. Errors and reassessment. The hearing officer erred by failing properly to account for the meaning and low distinctiveness of ORIGIN and by failing properly to take account of the absence of the Logo Mark’s distinctive vine-leaf device. The hearing officer did not materially misapply LA Sugar Ltd v By Back Beat Inc O/375/10 in addressing indirect confusion, which concerns a belief in a commercial connection without mistaking one mark for the other.
5. Likelihood of confusion. For the Word Mark, the low similarity of the goods, the minimum distinctiveness of the mark, the low distinctiveness of ORIGIN and the distinctive JURA element pointed against confusion. For the Logo Mark, identical goods and moderate distinctiveness pointed towards confusion, but the distinctive JURA element, the vine-leaf device and the additional differences pointed against it. A common element of low distinctiveness, where it is the only similarity, points against likelihood of confusion. On a global assessment, neither earlier mark created such a likelihood.

1. Trade Mark Registry hearing officer. The oppositions were upheld in written decision O/325/14 dated 23 July 2014.
2. High Court (Chancery Division). The appeal was allowed and the JURA ORIGIN mark could proceed to registration.