Sean Hutchinson

January 2022

Background

On 11 March 2020, Little Hare Gin Company Limited (hereinafter, “the Applicant”) applied to register a UK trade mark for a series of logos developed for a range of goods and services, most notably including “gin” in Class 33.

Each logo comprised an image of a hare with the words “LITTLE HARE GIN” written underneath.

On 26 June 2020, Harrogate Distillery Ltd T/A Whittaker’s Gin (hereinafter, “the Opponent”) filed an opposition against the Applicant’s trade mark application on the grounds that this amounted to passing off of its own mark, which also comprised an image of a hare and had been registered for “gin” in Class 33 prior to the filing date of the Applicant’s trade mark application.

The Opponent argued its mark had been in use across the UK since 2015 and had since then accrued a reputation and goodwill amongst the UK public. The Opponent said it believed the Applicant would unfairly benefit from its goodwill and thus the presently contested trade mark application amounted to passing off of the Opponent’s mark.

The relevant legal test and the burden of proof

The Hearing Officer referred to the earlier decision of Discount Outlet v Feel Good UK, [2017] EWHC 1400 IPEC, in which the Judge explained that, to succeed in a passing off claim, the Opponent must first demonstrate that the mark being relied upon had developed goodwill and a reputation amongst a relevant class of persons by the relevant date.

The Hearing Officer decided that, in the present case, the relevant class of persons would be the UK public, and that the relevant date would be the filing date of the presently contested trade mark application, namely 11 March 2020. Additionally, the Hearing Officer noted the burden would be on the Opponent to demonstrate sufficient goodwill and reputation for the passing off claim to be successful.

Use of the mark for different products

The Opponent argued the mark it was relying upon was in use for its whisky and vodka products and that sales of these products had helped its mark accrue goodwill. However, the Hearing Officer noted the Opponent had stated in its notice of opposition that it was relying on goodwill only in respect of “gin”. The Hearing Officer therefore dismissed this argument as irrelevant.

Arguments not supported by evidence

The Opponent further argued its mark had acquired goodwill as a result of its appearance on popular TV shows, such as The Apprentice and The Yorkshire Vet. However, the Opponent did not provide any evidence that the mark had ever appeared on these programmes and, in the absence of any evidence to this extent, the Hearing Officer thus concluded it could not consider this argument. This line of argument was therefore dismissed.

Evidence from after the relevant date

The Opponent additionally filed two witness statements written by the Director of the company that created the relevant brand for the Opponent and a series of accompanying exhibits.

These witness statements made reference to two print-outs from websites, these being the websites of a UK gin retailer and a Swiss gin retailer, respectively. However, both of these print-outs were dated January 2021, and the Hearing Officer thus dismissed these as irrelevant because these were from almost a year after the relevant date (11 March 2020).

Evidence relating to a class of persons other than the relevant class of persons

The presently contested trade mark application was for use of the mark in the UK only, although one of the website print-outs referred to by the Opponent’s witness related to sales of gin in Switzerland. The Hearing Officer decided this evidence was therefore not relevant to assessing whether the mark had accrued goodwill and a reputation amongst the UK public.

Furthermore, the witness statements explained that the Opponent’s products had won several awards and alleged this fact to be indicative of a reputation and goodwill. However, the Hearing Officer noted that one of these awards was from after the relevant date, and another was awarded by an American institution. Accordingly, the Hearing Officer decided this information was not relevant to assessing goodwill and reputation amongst the UK public at the relevant date.

Evidence relating to marks other than the mark being relied upon

The Opponent’s witness further argued that sales of gin products bearing an image of a hare had contributed to the success of the Opponent’s Directors and had ultimately led to the Directors of the Opponent becoming members of the Gin Guild prior to the relevant date. In support of this, the Opponent’s witness put forward an image of a marketing label comprising an image of a hare.

However, the Hearing Officer noted this marketing label did not depict the mark the Opponent was relying upon in the present case. Therefore, the Hearing Officer decided this evidence was insufficient to demonstrate that the mark actually being relied upon had developed goodwill and a reputation at the relevant date.

Decision

The Hearing Officer explained it is clear from an array of previous trade mark decisions that reputation and goodwill in relation to a trade mark arise as a result of the mark being used in the relevant market. In the present case, the Hearing Officer noted the Opponent had provided no evidence of use of the mark upon which it was relying in its trading activities, but had instead provided evidence that the Hearing Officer deemed to be irrelevant.

Accordingly, the opposition was rejected on the grounds that the Opponent had failed to demonstrate its mark had achieved goodwill and a reputation at the relevant date, and the Applicant’s mark was permitted to proceed to registration.

Conclusions

This decision provides several important lessons for anyone considering filing an opposition to a trade mark application.

In particular, the decision highlights that an Opponent should file evidence only insofar as it relates to the mark being relied upon and use of that mark for the marketing of relevant products at the relevant date.

Additionally, this decision emphasises the need for an Opponent to file evidence in support of any arguments it intends to put forward, and the need for an Opponent to file evidence relating only to use of the mark being relied upon amongst a relevant class of persons.