ANOTHER ADVOCAAT CASE

The IPKat presents a decision from the Trade Marks Registry, concerning one of the trade mark lawyer’s favourite tipples – Keeling’s Advocaat. House of Townsend applied to register a device mark in the form of a label containing the words KEELING’S ADVOCAAT PRODUCE OF HOLLAND MADE FROM FRESH GRADE ‘A’ EGGS PRODUCED FOR H. KEELING & CO RED DUSTER and various figurative elements for wines, spirits and liqueurs in Class 33. JMV Jose Maria Vieira opposed the mark, based on its registration of the word mark FEELINGS for alcoholic beverages in Class 33 and citing a likelihood of confusion under s.5(2)(b) of the Trade Marks Act 1994. In arguing that there was no likelihood of confusion, House of Townsend pointed out that it had been using its mark for over 30 years, while the opposing mark had only been put into use 19 years after House of Townsend began to use its label mark.

Warnick's Advocaat, which first brought Townsend's Advocaat to the attention to trade mark lawyers

The opposition was rejected:

*The goods were identical. Townsend’s wines, spirits and liqueurs were included within Vieira’s registration for alcoholic beverages.

*The reputation of the earlier trade mark was an important consideration when making a determination under Section 5(2) of the Act. Although the word FEELING was not an invented word, it had sufficient inherent distinctiveness to entitle it to a reasonable degree of protection.

*Visually, Vieria’s mark was a plain word mark, which House of Townsend’s mark was a complex label mark. However, the word KEELING’S was the distinctive and dominant component of House of Townsend’s mark. Both words were eight letters long and had the same final seven letters. However, KEELING’S had an apostrophe, and the particularly important first letters of the two marks were different. Thus, the marks shared a degree of similarity, but the difference between the initial letters would not be overlooked.

*There was a degree of aural similarity because of the shared seven letters and the identical length of the two marks, but this was mitigated by the difference in the first letters of the two marks. While the goods might have been ordered orally (e.g. pubs and bars), a visual inspection of the bottles containing the goods prior to the order being placed was likely. This visual inspection reduced the likelihood of aural/oral confusion.

*Conceptually, the marks were quite different. Vieira’s FEELING mark would trigger one or more of the dictionary meanings of the word FEELING, while KEELING’S would be perceived as a surname, particularly when viewed in conjunction with the fact that the words H KEELING & CO were used on the label.

*Applying a global approach, the average consumers of the goods in question (who was any member of the public aged over 18 and who was likely to pay a relatively high level of attention the purchase because of the scope for personal preference in selecting alcoholic drinks) would not be likely to be confused. Although the goods were identical, there was only a low degree of visual and oral/aural similarity between the marks and there was a clear conceptual dissimilarity.

The IPKat really isn’t sure about this decision. While it’s true that we must pay particular attention to the distinctive and dominant components of marks, the hearing officer has essentially ignored the striking elements of Townsend’s label (including the rather striking naked ladies/androgynous cherubim) and instead just compared the two words KEELING’S and FEELING. Moreover, the IPKat isn’t convinced that people pay careful attention to buying alcoholic drinks, particularly in often crowded, noisy pubs, nor do they have the opportunity to carefully inspect the labels on drinks located behind the bar, often with a barman standing between them and the booze. Merpel says advo-caat has to be her favourite drink, being a combination of feline and lawyer.