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Drink sales CTM “valid”

OHIM has ruled in favour of the owner of a figurative CTM in a dispute between two UK companies over the use of variations of the word “drink” in connection with their respective night club and off-licence businesses.

The Northern Ireland based company, Botanic Inns Ltd, registered the disputed CTM in 2004, for a range of goods and services in classes 21, 35 and 43. Harpers Leisure International Limited, from Guildford in Surrey , which owns the UK trade mark registration “The Drink”, registered in 1999, applied for the CTM to be declared invalid on the grounds of likelihood of confusion.

The invalidity applicant's mark is registered for bar services in class 42 and the company was contesting the registration of the Northern Ireland firm's mark for beer mugs and other bar accessories (class 21) and for off-licence services (class 35).

The Guildford company argued that since the name of a bar often appeared on beer mugs, glasses and other accessories this rendered the goods similar to the bar services for which its mark was registered, albeit in a different class.

OHIM's Cancellation Division rejected this argument on the ground that the type of use described by the applicant was more likely to serve a promotional purpose for the bar services as such and not as use of a sign as a source indicator for glasses and other bar accessories.

However, the Cancellation Division found that the bar services provided by the Guildford night club (class 42), which included providing drinks for consumption off the premises, was “similar to a low degree” to the off-licence services of the Northern Ireland company (class 35).

Comparing the signs, the Cancellation Division found that in spite of the common letters, the marks were visually dissimilar, however, given that the disputed CTM “dr:nk” (with a colon rather than an “i”) would be seen by many as alluding to the world “drink”, there was a medium degree of aural and conceptual similarity.

Rejecting the invalidity application, the Cancellation Division ruled: “Considering the low degree of similarity between the retail services in class 35 of the contested mark and the bar services in class 42 of the invoked earlier mark, the normal degree of attentiveness of the public and the fact that the marks are visually dissimilar, these factors will outweigh the medium degree of aural and conceptual similarities between the marks. Overall, the weak distinctiveness of the invoked earlier mark will also work against any likelihood that the relevant public will be lead to believe that the off-licence retail services provided by the CTM proprietor come from the applicant or an undertaking economically linked thereto. “