Win for 'wines'

In the ATMO decision of Pernod Ricard SA trading as Pernod Ricard Europe v Soho Wine Company Limited [2011] ATMO 111 (14 November 2011), Pernod Ricard was successful in opposing registration of the SOHO Logo filed by Soho Wine Company Limited.

The application for SOHO Logo was for the following logo:



The application covered various goods in classes 32 and 33, including "red wines, white wines and sparkling wines" in Class 33.

Pernod Ricard based the opposition on its own prior registrations and those of another entity, for marks including SOHO which covered liqueurs and fortified wines.

On deceptive similarity
The Hearings Officer concluded that the marks in issue were deceptively similar because of the prominence of the term SOHO, which is the very word by which the trade mark can be remembered and recalled. The marks were considered deceptively similar notwithstanding the vertical arrangement of SOHO in the application.

Wines and liqueurs are 'good of the same description'
He also found that wines applied for in Class 33 were 'goods of the same description' the registered goods liqueurs.

The Hearings Officer referred to the dictionary definition of liqueur, which was 'any class of alcoholic liquors, usually strong, sweet and highly favoured, as chartreuse, curacao etc'.  He also referred to the definition of wine, which was '1. the fermented juice of the grape, in many varieties , (red, white sweet, dry, still, sparkling) etc. used as a beverage and in cookery...2.a particular variety of such fermented grape juice: port and sherry wines...3. the juice, fermented or unfermented, of various other fruits or plants...'

The Hearings Officer found that the goods of the application were 'of the same description" as liqueurs because:
1. Liqueurs (as applied for) encompass all liqueurs and therefore includes wine liqueurs and fruit liqueurs as expected to be made by wine makers.

2. Many makers make both wines and liquor wines (eg Seppelt, Orlando, Rosemount).

3. Wines and liqueurs are consumed in the same way (i.e., as an aperitif, as meal accompaniements, etc).

4. These goods are sold in the same shops (eg bottle shops, hotels, liquor stores, supermarkets).

5. Wines and liqueurs  are frequently placed in close proximity to one another in shops.

6. The public is accustomed to seeing to seeing brands of wines and liqueurs as indicating a common source.

Honest, concurrent use issues
The Applicant had attempted to file evidence of honest, concurrent use in an attempt to overcome the prior SOHO marks cited against it.

The opposed application was filed on 22 May 2008. First use commenced in November 2008. However, the Exam report raised prior SOHO registrations of the Opponent and another party in the interim. This suggested that at the time of its first use, the Applicant was aware of the conflicting registrations.

The Hearings Officer also commented that the evidence did not establish the circumstances in which the SOHO mark was adopted by the Applicant.

The Hearings Officer concluded that use from November 2008 in light of knowledge of the prior SOHO registrations showed ' a degree of insouciance on the part of the applicant'.

On this basis, the Officer held that the Applicant had not established honest, concurrent use.

Decision
The Hearings Officer decided that the opposition ground was established for Class 33 and ordered amendment to the SOHO Logo application by excising Class 33 and removing 'red wines white wines and sparkling wines' from the application.

Comment
This case confirms that a broad specification of wines covers liqueurs, as these are 'goods of the same description'.

It also shows that use of a trade mark in light of prior knowledge of third party's similar marks can lead to an inference of dishonesty. Therefore, best practice in preparing such evidence is, if possible, to (i) address the applicant's creation or adoption of its mark, and (ii) to address the applicant's lack of knowledge of any relevant third party marks at the time of first use.

Roanne De Menezes, Senior Associate