The English High Court has over turned a trademark decision by the UKIPO.
The English High Court has over turned a decision by the UKIPO.
The Court has granted the whisky maker Whyte and Mackay a trademark for its Jura brand, despite the UK Intellectual Property Office (IPO) ruling that it was too similar to marks owned by drinks maker Origin Wines and Dolce Co Invest.
The trademarks involved are ‘Jura Origin’ (whyte and mackay) and two UK registered trademarks owned by Origin Wine (Origins and Origin) and one Community trademark (CTM) owned by Dolce Co (Orign Wine)
In his Judge Arnold said the ‘Jura Origin’ trademark can now proceed to registration and did not believe the trademarks were confusingly similar
Whyte and Mackay applied to register the mark at the UK IPO in February 2013.
Origin Wine opposed the application arguing it was too similar to two trademarks it owned for ‘Origins’ and ‘Origin’. The marks were registered in 2001 and 2003 respectively.
Dolce Co also opposed the application and claimed that Whyte and Mackay’s trademark was too similar to its own CTM, a logo showing a vine-leaf on top of the phrase ‘Origin Wine’.
In July 2014, the IPO rejected Whyte and Mackay’s trademark application. Whyte and Mackay appealed against the decision.
The Judge stated that the hearing officer at the UKIPO had fully analysed the level of visual, aural and conceptual similarity” between the respective trademarks. He said: “I consider that the expression ‘Jura Origin’ would be understood by the average consumer as meaning that the goods originated from the producer called Jura. Accordingly, the word ‘Origin’ does not have an independent distinctive role in the Jura mark.”
On Dolce Co’s CTM, the judge said that the vine-leaf images distinguish the CTM from Whyte and Mackay’s ‘Jura Origin’ application.