Practice Amendment Notice

PAN 10/02 - Issued 29 October 2002

Citing practice on 'Alcopops'

In view of a number of recent cases discussed in the Registry it has been decided to clarify the practice on citing between Classes 32 and 33 when considering 'alcopops'.

Definition

'Alcopops' are defined in New Oxford Dictionary of English (1998) as 'ready mixed soft drinks containing alcohol'. The term is rarely used in specifications but would be included in broader terms such as 'alcoholic beverages', 'alcoholic lemonade/orange/cola', 'pre-mixed alcoholic drinks', 'spirit mixers', 'alcoholic carbonates/soda', 'alcoholic ready to drink (RTDs)', 'wine coolers', 'dairy coolers'. Many other variations are used.

Citing practice

As there are many permutations, only general guidance can be provided. Each case turns on its own facts. In particular, consideration should be given to the degree of similarity and the degree of distinctiveness of the marks at issue.

Assuming high inherent distinctiveness and that later mark is identical, or nearly identical, to earlier mark or dominant feature of it:

Cite

• general terms, for example, 'non-alcoholic beverages' against 'alcoholic beverages'; 'lemonade' against 'alcoholic beverages' (unless limited).
• specific terms, for example, 'lemonade' against 'alcoholic lemonade', 'alcoholic carbonated drinks'; 'fruit juice' against 'alcoholic fruit juice', 'pre-mixed alcoholic drinks', 'spirit mixers'.

In other cases the degree of similarity between the goods should be taken into account, for example, do not cite 'fruit juice' against 'alcoholic cola'.

The degree of similarity between the respective marks will have to be high to justify protecting a mark registered for alcoholic beverages against non-alcoholic beverages and vice versa.

Therefore, where the earlier mark is only similar (as opposed to identical/near identical) to the later mark, or is the dominant and distinctive feature of it, the Examiner may not cite an earlier mark registered for alcopops (however described) against a mark applied for in respect of non-alcoholic beverages in Class 32.