Scotch whisky producer wins appeal to register ‘Jura Origin’ as a trade mark

A judge in the High Court in London upheld an appeal by Glasgow-based Whyte and Mackay, after a hearing officer had earlier refused the application following opposition by Origin Wine UK Ltd and Dolce Co Invest Inc on the ground that there would be “a likelihood of confusion” between the Jura mark and the respondents’ respective trade marks for the word mark “origin” registered for wines and for a logo mark registered for certain alcoholic beverages.

Mr Justice Arnold heard that in February 2013 the appellant Whyte and Mackay filed a UK trade mark application for the words “Jura Origin” in respect of “Scotch whisky and Scotch whisky-based liqueurs produced in Scotland”.

The application was opposed by the respondents, which are associated companies, on grounds raised under section 5(2)(b) of the Trade Marks Act 1994, which implements Article 5(1)(b) of European Parliament and Council Directive 2008/95/EC.

The hearing officer held that despite the goods only having a “low degree of similarity” the marks were “sufficiently similar that the average consumer would be directly confused”.

He added that even if the average consumer would not mistake the marks for each other the “similarities in the marks and goods are such that the it would lead the average consumer into believing that the applicant and the opponent are commercially linked and they are likely to assume that the products produced under the application have a common origin to those produced under the earlier mark”.

Among the five grounds of appeal lodged by Whyte and Mackay was the argument that the hearing officer failed to consider whether the conceptual meaning of the word “Jura” in the Jura mark outweighed the similarities between the respective marks due to the presence of the word “origin”.

The company also argued that the hearing officer failed to take into account the principle that, where the only similarity between the respective marks consists of a common element which has low distinctiveness, that will not normally give rise to a likelihood of confusion.

The judge held that there was “an error of principle” in the hearing officer’s approach.

In a written judgment, Mr Justice Arnold said: “The root problem with his analysis is that he failed at the outset to consider how the average consumer would understand the word ‘origin’ in the context of the relevant goods.

“For this purpose, it makes no difference whether one is considering the respondents’ goods (wine in the case of the word mark) or the appellant’s goods (Scotch whisky and whisky-based liqueurs). Either way, in my judgment the average consumer would understand the word ‘origin’ as referring to the origin of the goods, whether their geographical origin or their trade origin.

“This would be true in relation to most goods and services, but it is particularly true of both wine and Scotch whisky, where geographical origin is both an important factor in quality and frequently intimately associated with trade origin. It is follows that the word ‘origin’ is inherently descriptive, or at least non-distinctive, for the goods in issue.”

The hearing officer had also concluded that the average consumer would not be aware that Jura was an island in Scotland, but the judge expressed “some doubts” about this.

He continued: “It follows that, as the hearing officer appears also to have concluded, the average consumer would perceive the word ‘Jura’ as being distinctive of the appellant’s goods.

“In those circumstances, 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.”

Counsel for the appellant further argued that the appellant’s evidence showed that Jura was a well-known trade mark for Scotch whisky and that the hearing officer should therefore have concluded that the presence of the word ‘Jura’ in the Jura mark represented a conceptual difference from the respondents’ marks which outweighed the similarities due to the presence of the word ‘origin’, but Mr Justice Arnold did not accept that argument.

He observed that there was “a plain similarity” between the Jura mark, the word mark and the logo mark in that all three marks included the word ‘origin’, but added that whether that similarity gave rise to a likelihood of confusion was “a separate question”.

In re-assessing the likelihood of confusion between the Jura mark and the word mark, the judge found that the “low degree of similarity between the respective goods” and the “low distinctiveness” of the word mark and the distinctiveness of the word ‘Jura’ “all point against there being a likelihood of confusion”.

Turning to the respondents’ case based on the logo mark, the judge observed that one of the key factors against there being a likelihood of confusion was the fact that the word ‘Jura’ had “no counterpart in the logo mark and is distinctive”.

Mr Justice Arnold concluded: “Standing back and considering the matter overall, I do not consider that there is a likelihood of confusion. The Jura mark may proceed to registration.”