30 November 2018

CARAVAN is found to be distinctive for tea in the UK

On 3 May 2017, TWG Tea Company Pte Ltd (the "Applicant") applied to register CARAVAN as a UK trade mark for the following goods in class 30:

Tea; black tea [English tea]; flavourings of tea; tea-based beverages; fruit flavoured tea; fruit tea; beverages with tea base; rooibos tea; herbal tea; chai tea; green tea; Japanese green tea; oolong tea (Chinese tea); aromatic teas; beverages made of tea; iced tea; tea bags; tea extracts; tea essence; tea for infusions; spices; sugar; chocolates; chocolate bars; pralines; edible ices; ice cream; sorbets (ices); ice desserts, confectionery; cakes, pastry; macaroons (pastry); pastries; biscuits; cookies, aromatic preparations for pastries.

The mark was accepted and published. Shortly after publication, the mark was opposed by Unilever Plc on the basis that:

  • CARAVAN cannot fulfil its essential function because, when viewed in connection with the applied-for goods, it will be perceived as a referring to a common type of tea (known as "Caravan tea").
  • The mark applied for is a direct reference to the caravans that transported tea from China to Europe via Russia and refers to the flavour/style of the tea that was transported.
  • CARAVAN is a common name used to describe a type of tea and/or tea-related products that have a particular style or flavour, one example of which is Russian Caravan tea.
  • CARAVAN consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

The Applicant filed a counterstatement denying most of the claims made. It did however admit that Russian Caravan was a term used by third parties. However it denied that this was relevant to the current proceedings. The Applicant did not file any evidence despite initially arguing that their mark had acquired distinctiveness through the uses made for the goods applied for. The matter therefore proceeded on the basis of the perception of the mark on the relevant public as at the filing date and any changes in language that may have affected the uses made since.

To support their position, Unilever submitted quite a large volume of evidence. The majority of this supported their claims regarding the meaning of the word CARAVAN and the likely perception of that on the relevant public or in trade circles. Unilever's representatives also attended a hearing and clarified that the opponent’s claim is that CARAVAN describes a blend of tea which is fairly strong and smoky but whose characteristics are not firmly fixed.

The UK Intellectual Property Office (the "UKIPO") accepted that Russian Caravan is used to identify a blend of tea, known for its smoky flavour. The fact that the Applicant agreed with this did not help them although the UKIPO seemed to confirm that the Opponent's evidence would have shown this in any event. The UKIPO found that the trade mark applied for was CARAVAN and not Russian Caravan and so this factor was not entirely relevant to the current proceedings.

Some evidence was submitted to show that the term "caravan tea" was in use by third parties but unfortunately only a few of these examples showed use directed at UK customers. Such evidence failed to establish that the UK consumer would have been exposed to “caravan” for tea.

Other evidence was submitted including internet print-outs from tea websites. Only one of these indicated that there was a category of teas called "caravan teas" which is synonymous with both China Caravan and Russian Caravan teas. It was again not clear whether this targeted the UK customer presenting difficulties with its relevance. Some other evidence was submitted but it was either not dated or not sufficiently clear. This included a book extract which had no information on when it was published or distributed.

There was some evidence which recounted anecdotes of Russian Caravan tea acquiring its flavour from the campfires en route to Europe. Despite this the UKIPO Hearing Officer was doubtful that, even for those consumers who are aware of the tea caravans, the term CARAVAN would be perceived as anything more than alluding to the transport means and routes of bygone days.

It was found that the evidence as a whole was insufficient to establish that CARAVAN had become customary in the trade (at the filing date in May 2017) or that it was descriptive of a characteristic of the goods. The UKIPO did not believe that there was a need at the filing date to keep the term CARAVAN free for all UK traders to use. They found that the mark was sufficiently distinctive to be registered as a UK trade mark, and that it could act as an indicator of origin. Had the mark been Russian Caravan the outcome may have been very different.

As a result of the above, the opposition failed. Unless Unilever appeal, the CARAVAN application will now be registered as a UK trade mark for all the goods mentioned above.

The take away message is that the success of any trade mark application challenged on the basis of descriptiveness (or the other grounds discussed here) depends very much on the evidence submitted. The focus is on what was known to the relevant public/trade at the filing date, or in the case of a mark becoming customary what has changed since filing in the relevant territory. Submitting evidence of use towards non-UK consumers is not going to be convincing, especially when in different currencies as was the case here (one piece of evidence was in dollars rather than sterling).

Case ref: O/656/18

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