JACK DANIEL’S is not the victor
Jack Daniels Properties, Inc (JD), known for JACK DANIEL’S whisky, opposed a third-party application to register JACK & VICTOR as a UK trade mark. The application spanned various classes, all of which were opposed by JD, but here we will solely concentrate on the Class 32 and 33 elements covering alcoholic drinks – clearly the core concern for JD.
JD relied on eleven earlier UK TM registrations, all but one of which were old enough to entitle the applicant to prove evidence of use, a right which the applicant exercised. The only registration relied upon by JD which was not old enough to entitle the applicant to request evidence of use was a registration of JACK ROCKS. In addition to claiming likelihood of confusion with these registered marks, JD opposed on the basis that the reputation of some of its earlier registrations was such that use of the opposed mark would lead to unfair advantage or detriment and also opposed on the basis of unregistered rights.
Proof of use
Following a hearing at the end of 2022, the UKIPO issued its decision on the opposition in May 2023. The Hearing Officer who decided on the opposition (HO) was satisfied that the evidence filed by JD proved genuine use of its registration of JACK DANIEL’S on whisky, whisky based beverages. Notably, the Hearing Officer also agreed that JD had demonstrated genuine use of its registration of JACK in the UK in respect of whisky.
Similarity of goods
The HO found a low degree of similarity between whisky and the opposed lager/beer/shandy goods in Class 32 on the basis that, while in competition with each other, they belong to different categories of alcoholic beverages and are displayed in different sections of licensed premises.
The HO found that all the opposed Class 33 goods were identical to the alcoholic beverages covered by the JACK ROCKS registration. The HO found that all of whisky,cream whisky whiskey, bourbon, rye whiskey, flavoured alcoholic sprits were identical to, the whisky; whiskey-based beverages covered by the registrations of JACK and JACK DANIEL’S and that the opposed Gin; Flavoured Gin; Vodka; Rum were highly similar to those goods.
As regards the distinctive character of JD’s earlier trade marks, the HO was satisfied that JACK DANIEL’S had acquired a high degree of distinctiveness in the UK for whisky-based beverages. In relation to the registration of JACK, she accepted that it had acquired some distinctive character for whisky but that, given that, as a common forename, it was inherently weakly distinctive, it only had a low degree of distinctiveness overall. She found that JACK ROCKS had an average degree of distinctive character.
Similarity of the marks
When assessing similarity of the opposed mark to JD’s marks, the HO found that the opposed JACK & VICTOR had a medium degree of visual, aural and conceptual similarity to JACK but only a low degree to similarity to JD’s other marks.
The HO found that, despite its high level of distinctiveness, there was no likelihood of confusion with the JACK DANIEL’s or JACK ROCKS marks, even for identical goods.
In relation to JD’s registration of JACK, the HO found that the additional element “& VICTOR” in the opposed mark was sufficient to rule out the possibility of direct confusion. In relation to indirect confusion, the HO rejected JD’s argument that, since average consumers are accustomed to consuming products bearing the JACK mark mixed with another beverage e.g. Jack & Coke, they are likely to assume that JACK & VICTOR would consist of JD’s JACK product with a mixer bearing the brand name VICTOR. In response to JD’s submission that it is common for drinks producers to create a number of brands around the same brand element, she held that there was no logical reason why JACK & VICTOR would be a likely brand extension of JACK. Thus, she held that there was no indirect confusion, even for identical goods.
Other bases of opposition
In relation to JD’s claim of reputation for its JACK DANIEL’S and GENTLEMAN JACK marks, the HO found that the differences between these and the opposed mark meant that consumers would not think of either of these earlier marks. In relation to JD’s claim of reputation for its JACK mark, the HO agreed that, while the earlier mark would be called to mind, there would be no unfair advantage or detriment to distinctive character or reputation. JD’s opposition based on its unregistered UK rights was also rejected.
Thus, although it had been able to prove genuine use of its registration of JACK for identical goods and acquired distinctiveness of JACK DANIEL’S for identical goods, JD’s opposition failed.
If not successfully appealed, the decision is a stark warning as to the limits of well-known brands to prevent the registration of marks for identical goods, even where the marks begins with one of the opponent’s registered trade marks.
Based on the fact that, on the UKIPO register, the contested application retains the status of Opposed, it would appear that the UKIPO’s decision is under appeal.