Trade mark decision

BL Number
O/222/06
Decision date
7 August 2006
Hearing Officer
Mr G Salthouse
Mark
EDINBURGH PALE ALE
Classes
32
Applicant
Edinburgh Brewery Company Limited
Opponent
Caledonian Brewing Company Limited
Opposition
Sections 3(3)(b), 3(6) & 5(4)(a)

Result

Section 3(3)(b): Opposition failed. Section 3(6): Opposition failed. Section 5(4)(a): Opposition failed.

Points Of Interest

  • None

Summary

The opponent claimed to have used the mark EDINBURGH STRONG ALE since 1969 but the Hearing Officer considered that the evidence showed use of the mark C ALEDONIAN EDINBURGH STRONG ALE and such use commenced about 1992. Sales in the period 1998-2003 averaged some £96,000 per annum and the Hearing Officer accepted that the opponent had a reputation and goodwill in its mark.

The opponent also claimed that it was essentially the only brewery in Edinburgh and that this brewery had a local reputation in addition to the sale of its EDINBURGH STRONG ALE beer. If another party were to use that term in relation to beer not brewed in Edinburgh the public would be mislead.

The ex-Managing Director of the opponent is a director of the applicant and the opponent submits that there was an element of bad faith in applying for a mark so similar to its mark as used. The opponent also objected to the applicant disclosing information about the registrability of the mark EDINBURGH STRONG ALE which was obtained by a director of the applicant when he was employed by the opponent.

Under Section 5(4)(a) the Hearing Officer compared the respective marks EDINBURGH PALE ALE THE EDINBURGH BREWING COMPANY LTD and CALEDONIAN EDINBURGH STRONG ALE. While the marks have some similarities the Hearing Officer concluded that CALEDONIAN is a strong element in the opponent’s mark and that the public would not be confused as to origin of the respective goods. As there would be no misrepresentation the opposition on this ground failed.

As regards Section 3(3)(b) the Hearing Officer was of the view that there was no evidence to prove that there was such a thing as Edinburgh Ale. Also the applicant had provided many examples of the use of geographical names in use in relation to beers brewed in other locations. Overall the Hearing Officer concluded that it was unlikely that customers would be misled if the applicant’s beer was brewed outside Edinburgh.

Under Section 3(6) the Hearing Officer believed that the opponent had not substantiated its claim to bad faith because, in fact, the Hearing Officer had reached the view that the respective marks were not confusingly similar. Opposition failed on this ground.

Full decision O/222/06 PDF document201Kb