When is a drink herbal?

When is a drink herbal?

On Monday Mr Justice Warren, of the Chancery Division (England and Wales) heard an appeal against the Trade Mark Registry in Sunrider Corporation (trading as Sunrider International) v VITASOY International Holdings Ltd. This decision is not yet on BAILII: the IPKat found it in a none-too-clearly note on the LexisNexis subscription-only service.

Sunrider owned the trade mark for the word VITALITE, registered for various things including herbal and nutritional supplements and foods. Vitasoy, a Hong Kong company, promoted its VITASOY line of nutritional soybean drink and VITA dairy milk products, juice drinks, teas carbonated drinks and bottled water, for which it held registered trade marks. Vitasoy sought cancellation of Suinrider's mark under section 5(2)(b) of the Trade Marks Act 1994, maintaining that VITALITE was similar to its own marks and was registered for goods that were identical or similar to Vitasoy's goods, there being a resultant likelihood of confusion.

The hearing officer took the view that there was no risk of confusion between the VITALITE and VITASOY marks, but that the use of VITALITE for all class 32 goods was likely to cause confusion with VITA. He considered that, while Sunrider's goods were described as 'herbal drinks' they were not herbal per se, being a beverage that had herbs as a minor ingredient. This being so, they were potentially similar goods to those for which Vitasoy had an earlier registration.

On appeal Warren J, allowing the appeal in part, held as follows:

* 'Herbal drinks' within Sunrider's class 32 specification were not similar goods to those within the VITA class 32 specification. A beverage that was identified primarily as a carbonated and non-alcoholic drink made from or including sugar cane, guava and mango did not become a 'herbal drink' by having a herb added as a minor ingredient. This being so, Sunrider's herbal drink was self-evidently different in nature from Vitasoy's VITA drink.

* It was none too likely that the two drinks would be in competition, since the one was not an alternative to the other. While they might well be considered complementary products, the differences outweighed the similarities.

* There was no reason to upset the hearing officer's conclusion as to similarity of the marks and likelihood of confusion. Accordingly the decision made perfectly good sense and was unimpeachable.

The IPKat hopes he's got this right. Merpel says, it's cases like this that make IP law so interesting. Who else gets so excited about what constitutes a herbal drink?

Herbal recipes here
Become a medical herbalist here