Another Advocaat Case

presents a decision from the Trade Marks Registry, concerning ane of the merchandise grade lawyer’s favourite tipples – Keeling’s Advocaat. House of Townsend applied to register a device grade inwards the course of didactics of a label containing the words KEELING’S ADVOCAAT PRODUCE OF HOLLAND MADE FROM FRESH GRADE ‘A’ EGGS PRODUCED FOR H. KEELING & CO RED DUSTER as well as diverse figurative elements for wines, spirits as well as liqueurs inwards Class 33. JMV Jose Maria Vieira opposed the mark, based on its registration of the give-and-take grade FEELINGS for alcoholic beverages inwards Class 33 as well as citing a likelihood of confusion nether s.5(2)(b) of the Trade Marks Act 1994. In controversy that in that location was no likelihood of confusion, House of Townsend pointed out that it had been using its grade for over thirty years, land the opposing grade had alone been set into piece of job nineteen years subsequently House of Townsend began to piece of job its label mark.

Warnick's Advocaat, which outset brought Townsend's Advocaat to the attending to merchandise grade lawyers

The opposition was rejected:

*The goods were identical. Townsend’s wines, spirits as well as liqueurs were included inside Vieira’s registration for alcoholic beverages.

*The reputation of the before merchandise grade was an of import consideration when making a determination nether Section 5(2) of the Act. Although the give-and-take FEELING was non an invented word, it had sufficient inherent distinctiveness to title it to a reasonable grade of protection.

*Visually, Vieria’s grade was a evidently give-and-take mark, which House of Townsend’s grade was a complex label mark. However, the give-and-take KEELING’S was the distinctive as well as dominant element of House of Townsend’s mark. Both words were 8 letters long as well as had the same in conclusion 7 letters. However, KEELING’S had an apostrophe, as well as the peculiarly of import outset letters of the ii marks were different. Thus, the marks shared a grade of similarity, but the departure betwixt the initial letters would non live on overlooked.

*There was a grade of aural similarity because of the shared 7 letters as well as the identical length of the ii marks, but this was mitigated past times the departure inwards the outset letters of the ii marks. While the goods mightiness bring been ordered orally (e.g. pubs as well as bars), a visual inspection of the bottles containing the goods prior to the fellowship existence placed was likely. This visual inspection reduced the likelihood of aural/oral confusion.

*Conceptually, the marks were quite different. Vieira’s FEELING grade would trigger ane or to a greater extent than of the lexicon meanings of the give-and-take FEELING, land KEELING’S would live on perceived every bit a surname, peculiarly when viewed inwards conjunction amongst the fact that the words H KEELING & CO were used on the label.

*Applying a global approach, the average consumers of the goods inwards query (who was whatsoever fellow member of the populace aged over xviii as well as who was probable to pay a relatively high flat of attending the purchase because of the range for personal preference inwards selecting alcoholic drinks) would non live on probable to live on confused. Although the goods were identical, in that location was alone a depression grade of visual as well as oral/aural similarity betwixt the marks as well as in that location was a clear conceptual dissimilarity.

actually isn’t certain close this decision. While it’s truthful that nosotros must pay item attending to the distinctive as well as dominant components of marks, the hearing officeholder has essentially ignored the hitting elements of Townsend’s label (including the rather hitting naked ladies/androgynous cherubim) as well as instead only compared the ii words KEELING’S as well as FEELING. Moreover, the IPKat isn’t convinced that people pay careful attending to buying alcoholic drinks, peculiarly inwards ofttimes crowded, noisy pubs, nor produce they bring the chance to carefully inspect the labels on drinks located behind the bar, ofttimes amongst a barman standing betwixt them as well as the booze. Merpel says advo-caat has to live on her favourite drink, existence a combination of feline as well as lawyer.