http://ipkitten.blogspot.com/2021/11/whittakers-forced-to-gin-and-bear-it-as.html
Kat friend Becky Knott reports on a decision by the UK IPO that reminds us of the famous observation by former US President Bill Clinton, “It’s the evidence, stupid.”
As a fan of gin, this guest Kat could not help but notice a recent decision of the UK IPO Opposition division involving two “Hare” brands. There, the UK IPO rejected an opposition on the ground that the opponent had failed to file sufficient evidence to substantiate its claims of reputation and goodwill regarding gin products [decision here, Opposition No. O/765/21]. So let’s take a look at what happened.
Background
Harrogate Distillery Ltd T/A Whittaker’s Gin owns a UK registration for the mark below (the “Hare Logo”), covering, among other things, “gin” in Class 33.
On 26th June 2020, Whittaker’s opposed part of Little Hare Gin’s application. It relied on reputation under Section 5(3) of the UK Trade Marks Act 1994 and passing off rights under Section 5(4).
The UK IPO’s decision
Whittaker’s alleged, regarding the “gin” goods in Little Hare’s application, that use of the application (1) would take unfair advantage of, or be detrimental to, the distinctive character and/or reputation of its Hare Logo, and (2) would enable Little Hare Gin to benefit from its goodwill. Whittaker’s also claimed that there was a risk that Little Hare Gin’s product would be of lower quality, thereby causing damage to its brand.
The relevant date of assessment was 11th March 2020, the date of filing of the Hare Gin Logos.
The Hearing Officer rigorously went over Whittaker’s evidence. Paragraph 20 of the decision contains an extensive analysis of its flaws. The Hearing Officer noted that pieces of evidence were from outside the relevant date/territory, did not bear the Hare Logo, and/or did not clearly relate to the relevant product. He also drew attention to a mixing of submission and evidence of fact, and certain unsubstantiated claims.
For instance, in its submissions, Whittaker’s claimed that its gin had appeared on the TV shows The Apprentice and The Yorkshire Vet. However, it had provided no evidence to support this assertion (paragraph 14). In addition, its evidence in chief consisted of a witness statement from the director of the company that created the Hare Logo brand. The Hearing Officer commented that Whittaker’s had not explained why this director was filing evidence on its behalf (paragraph 19).
Consequently, following a careful review of the relevant case law, the Hearing Officer dismissed both grounds of the opposition for lack of substantiation. In respect of the reputation ground, he noted that—
‘I have no evidence whatsoever regarding any sales information or overall turnover figures for gin sold under the opponent’s mark in the UK…I have no evidence of advertising expenditure…a significant amount of the evidence that I have been provided with is of no relevance to an assessment of reputation under the 5(3) ground’ (paragraph 31).
The unregistered rights ground did not fare much better. Here, the Hearing Officer held that–
‘Put simply, the opponent has not provided any evidence as to its trading activities…[its] evidence falls well short of what I consider to be necessary to establish sufficient goodwill to maintain a claim of passing off’ (paragraph 43).
As such, the opposition failed on both grounds.
The Hearing Officer’s comments on Little Hare Gin’s evidence are also worth noting. In particular, he dismissed Little Hare Gin’s submission that there were several other different gin brands that use a hare on their packaging. Little Hare Gin had not provided any evidence of use in the marketplace or stated whether these brands had registered their marks.
In any event, the Hearing Officer confirmed that—
‘[t]he fact that there may be a multitude of trade marks on the register with Class 33 protection for gin that contain depictions of hares is not a relevant factor to the distinctiveness of the opponent’s mark’ (paragraph 12).
The state of the register alone is not sufficient evidence – it all comes down to use in the market.
Lastly, Little Hare Gin requested an award of costs off the scale. The Hearing Officer rejected this request. In particular, he did not consider the filing of the opposition by Whittaker’s to be unreasonable (paragraph 47).
Testing out the contested brands
Comment
The case provides both an extensive refresher on the relevant case law regarding reputation and passing off, and a reminder to a trade mark proprietor to have its evidence in check when filing an opposition. In particular, the following is noted:
(i) Support claims with evidence; (ii) evidence of other registered trade marks is not likely to be overly useful unless it is accompanied by evidence of use in the marketplace; (iii) keep evidence of use within the relevant dates; (iv) ensure that evidence shows use of the mark and not a similar mark/no mark at all; (v) do not include irrelevant evidence (e.g. use on a different product); (vi) keep submissions and evidence of fact separate; (vii) explain why witnesses are filing evidence on your behalf.
So, Kat readers, having imbibed these practical tips– “bottoms up”!
Pictures of marks are in the public domain.
Picture on lower middle is by the author.
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