- 30 Sep 2024
- •
- 2 min read
IP Horizons: September 2024
The IP world is full of interesting and often amusing cases, particularly in relation to trade marks. So in an attempt to bring a little light-hearted relief for our otherwise fairly serious legal newsletter, IP Horizons is going to become a regular feature.
If you have any interesting IP anecdotes or wish otherwise to contribute to our IP Horizons, please do let us know.
This month…
SUSSEX ROYAL vs. ROYAL: Brewing Up Confusion?
In a recent decision on the distinctiveness of individual parts of composite word marks, the EUIPO’s Fourth Board of Appeal (the Board) reversed a decision of the Opposition Division which had rejected an Italian individual’s EU trade mark application for ‘SUSSEX ROYAL’ in a number of classes, including classes 32 and 33 in respect of “beer and brewery products, soft drinks” and “alcoholic beverages (except beer)“, despite finding that a significant part of the public would associate this mark with Prince Harry and Meghan Markle.
The application was opposed, not by our own Royals, but by Royal Unibrew (the Opponent) which is a Danish brewing and beverage company which owns a number of brands including Ceres, Faxe, Albani, Thor, Karlens and, importantly, Royal.
Given that the marks are not identical, the Board’s primary consideration centred around the likelihood of confusion between the marks. Despite a rather longwinded reasoning, the Board found that there was no likelihood of confusion, which is, in our view, the right decision as the addition of the entire word SUSSEX to a non-distinctive mark should be enough for a finding of a lower degree of similarity. The decision is nevertheless interesting as, although the application appears to have been opportunistic – as it followed shortly after the news that Prince Harry and Meghan Markle had launched an Instagram account called Royal Sussex, and filed a UK trade mark application for the same – that application has since been withdrawn, purportedly due to the changes in the Sussexes’ involvement in royal life.
ICE LAND vs. Iceland: The Battle in Uzbekistan
The words ‘ICE LAND’ have once again made it into the news, this time in Uzbekistan where the Appeal Board reviewed a claim challenging the validity of ‘ICE LAND’ as a trade mark. The claim, filed by the government of Iceland (Ministry of Foreign Affairs and Economics) argued that the trade mark was deceptive and could mislead consumers about the geographical origin of the goods. Ultimately, the Board rejected the claim, upholding the trade mark registration instead.
This is interesting (to me as a trade mark lawyer!) because last year Iceland Foods Ltd, our own UK supermarket chain, lost its appeal against the cancellation of its EU trade marks for ICELAND (work and stylisation) on the basis that they designated the geographical origin of the goods.
The EUIPO Grand Board of Appeal decisions provide some useful guidance on the registration of country names as trade marks, indicating that brand owners should proceed with caution. Although the decision does not completely rule out country names functioning as trade marks, it does appear to make them more difficult to register, particularly where there is close proximity to the EU.
