Pirates, rum and a bit of Shakespeare – a cause for trade mark confusion?

In an entertaining decision reflecting the quirky popular fascination with all things ‘pirate’, while all parties agreed that buccaneers and rum are inextricably linked, differences in the idea or concept behind two ‘pirate’ trade marks for rum were sufficient to avert there being any risk of confusion, even when one trade mark wholly included the other.

In Patron Spirits International AG v Fernbrew Pty Ltd [2018] ATMO 87, Fernbrew’s trade mark application for ‘The Pirate Bay Rum Company’ in respect of alcoholic beverages was opposed by Patron on the basis of its trade mark ‘PYRAT’, registered in 2001, was also in respect of alcoholic beverages. The main ground of the opposition was that the two trade marks are substantially identical or deceptively similar and both claim similar goods. Patron also asserted its existing reputation in ‘PYRAT’ as the basis for not allowing ‘The Pirate Bay Rum Company’ to be registered.

Patron claimed that ‘pyrat’ is one of a number of alternative spellings of the word ‘pirate’. This particular alternative spelling of the word appears in early versions of Shakespeare’s Hamlet. According to the evidence, the spelling of pirate was not standardised until at least the 18th century.

Both parties agreed that there is a connection between rum and pirates. The Delegate made mention of Robert Louis Stevenson’s Treasure Island and its line from Long John Silver ‘Yo-ho-ho and a bottle of rum!’ and quoted as well from Captain Jack Sparrow: ‘Why is rum the gone?’, in Pirates of the Caribbean. The evidence also included examples of many rums that explore this theme, including Rebellion Bay, Captain Morgan and Black Roberts.

The Trade Marks Office decided that ‘The Pirate Bay Rum Company’ should be registered. While the goods of both marks are the same and there is arguably some aural similarity between pyrat and pirate, the Delegate considered there to be no real tangible danger of confusion between the two. For similar reasons, use of the trade mark was also considered unlikely to mislead or deceive consumers regarding a connection between the two rums.

On the matter of reputation, the Delegate remarked that ‘PYRAT’ rum is held in high esteem by those familiar with it, but overall lacked the requisite reputation for Patron to be successful on this ground of opposition. Further, even had a reputation existed, Fernbrew’s use of ‘The Pirate Bay Rum Company’ was again considered unlikely to deceive or cause confusion because of the differences between the two.

Although there are differences in spelling, this matter essentially concerns the issue of the eligibility for trade mark protection of a mark that wholly contains a registered mark and whether that coincidence of words is likely to cause deception or confusion for consumers. This occurs more often than might be expected. The issue has been dealt with by both the Trade Marks Office and in Court. One notable case is E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15,  in which ‘BAREFOOT’ and ‘BAREFOOT RADLER’ were considered to be deceptively similar. The precedent that has been established dictates that, amongst other factors, if the additional elements of the trade mark change the ‘idea’ of the mark, or the trade mark as a whole conveys a different meaning or concept, then it is less likely to be deceptively similar and can be registered alongside the trade mark it contains.

If you are concerned about the registrability of your trade mark because of other potentially similar marks, a Trade Marks expert can assist.