Another day, another trade mark dispute involving a spirit (Boutique Coffee Brand Limited v Chivas Holdings (IP) Limited; O/221/18): what a tonic for the soul!

 

Boutique Coffee Brands (a coffee and tea wholesalers based in Plymouth) had applied to register a figurative mark for Plymouth Breweries for a variety of beverages (including spirits) and services involving food and drink:

Chivas Holdings (IP) Limited opposed this UKTM application on the basis of its earlier EUTMs for the word PLYMOUTH and the figurative signs shown below:

The 9921644 mark

 

 

The 9893306 mark

 

Boutique Coffee Brands denied all the grounds and pointed out that its ship device was a historically accurate representation of the Mayflower which had transported the Pilgrims from Plymouth in England to Plymouth in Massachusetts, where they established the first permanent New England colony in 1620.

 

In their evidence, Chivas included documents showing the history of PLYMOUTH gin packaging since the late 1880s, which included images of friars (reflecting the location of the gin distillery in what was once a Dominican Order monastery built in 1431), ships and simple word labels:

 

 

 

However, the Hearing Officer said that the ship device first used by PLYMOUTH gin in 1980 looked more like a ship from the 1800s such as HMS Agamemnon or HMS Victory:

 

 

The Mayflower image as shown in Chivas’ 9921644 and 9893306 marks did not appear until 1998.

 

The goods covered by the marks could be ordered orally in public houses, but the Hearing Officer noted that customers would look at the bottles before placing an order. Also, the cost was relatively low, but the average consumer was likely to pay at least a reasonable level of attention to the goods at issue, bearing in mind that they would want to select the correct type, flavour, strength, etc.

 

The Hearing Officer then proceeded to analyse the marks and concluded that:

 

• Chivas’ PLYMOUTH word mark was not descriptive of the goods and was in fact a well-known city in SW England and suggested a simple geographical location.
• Chivas’ 9921644 mark consisted of a device of a sailing ship from the 17th century. Although said to be the Mayflower, it was doubtful that the average consumer would immediately draw this name to mind: “it is more likely to be seen as simply a galleon from the time of Drake and pirates”.
• Chivas’ 9893306 mark was very “busy” with a great deal of wording, but the word “Plymouth” and the ship device were prominent.

 

There was not enough evidence to support the suggestion that there was a likelihood of confusion in respect of Chivas’ 9921644 mark, but the fact that the Hearing Officer found that there was a likelihood of confusion between all of the goods and services in Classes 32, 33 and 43 applied for under the mark in suit and registered under Chivas’ 9893306 mark meant that the Plymouth Breweries figurative mark could not be registered for those goods and services.

 

Plymouth Gin used to be the only gin in the UK to have a protected Geographical Indication (GI) within the EU, awarded as a result of court cases in the 1880s brought by original owners Coates & Co under the “passing off” legislation to prevent London distillers producing a “Plymouth” gin. Its protected GI status has since been allowed to lapse and efforts have instead focused on protecting the name Plymouth Gin as a brand name and a trade mark which is now owned by Chivas Holdings (IP) Limited. As this case shows, sometimes trade mark protection can trump protected GI status.