Authors

Louise Popple

Senior Counsel – Knowledge

Read More

Callum Chamberlain

Trainee Solicitor

Authors

Louise Popple

Senior Counsel – Knowledge

Read More

Callum Chamberlain

Trainee Solicitor

13 July 2023

Brands Update - July 2023 – 3 of 5 Insights

UKIPO considers brand extension and family of marks arguments: JACK AND VICTOR not similar to JACK / JACK DANIELS for whisky

  • Briefing

The UKIPO has held that there is no likelihood of confusion between JACK & VICTOR and various earlier registrations for JACK DANIEL'S, JACK and JACK ROCKS. The differences between the marks, particularly the conceptual differences, were sufficient to rule out any confusion and JACK & VICTOR is not a natural brand extension.  

What has happened?

  • The case concerns an opposition by Jack Daniel's, the Tennessee based whiskey brand, to a UK trade mark application for the mark JACK & VICTOR.  
  • The JACK & VICTOR mark was applied for by Scottish comedians Greg Hemphill and Ford Kiernan for a variety of goods/services including beer, alcohol and whisky. 
  • Jack Daniel's opposed the application on the basis of its prior registrations (and use) of a variety of marks including JACK DANIEL'S, JACK and JACK ROCKS covering whisky and whisky-based beverages. 
  • Its main claim was that there was a likelihood of indirect confusion between the marks. Indirect confusion occurs where the average consumer does not mistake the marks for one another but nonetheless considers that they come from the same or economically linked undertakings. 
  • The opposition failed. The differences between the marks, particularly the conceptual differences, were sufficient to rule out any confusion and JACK & VICTOR was not a logical brand extension. For the same reason, the JACK & VICTOR mark would not be considered part of the "family" of JACK DANIEL'S marks.
  • Jack Daniel's claim of unfair advantage also failed. Any brief wondering about a connection would be swiftly dismissed because of the dissimilarities between the marks, which would cause consumers to conclude that these are two unconnected brands which happen to include the name “JACK”. 
  • The case is an important reminder that there are sometimes limits on the powers of even well-known brands to prevent the use of marks for identical and closely similar goods and services. This is especially so where the marks, while seemingly similar, have a different overall structure. 

Want to know more?

JACK & VICTOR 

The JACK & VICTOR mark was applied for by Scottish comedians Greg Hemphill and Ford Kiernan, who both featured in the popular BBC Scotland sitcom Still Game. The mark was named after Hemphill's and Kiernan's on-screen characters. The application covered:

  • Class 21 (glasses, drinking vessels and barware such as jugs and bottles)
  • Class 32 (beer, including flavoured, low-alcohol, lager and shandy beers)
  • Class 33 (alcohol including spirits, whisky)
  • Class 35 (retail of alcohol, including Scotch whisky)
  • Class 39 (packaging, storage, and delivery/transportation of alcohol)
  • Class 40 (distillation, including of Scotch whisky).

Jack Daniel's prior rights

Jack Daniel's opposed  the application based on prior registrations (and use of) three marks - JACK DANIEL'S, JACK and JACK ROCKS, covering whiskey and whiskey-based beverages in Class 33. It claimed a likelihood of (indirect) confusion, unfair advantage and passing off. 

Similarity of goods and services

The goods and services applied for were considered similar to whisky and whisky-based beverages to a high degree for Classes 32 and 33, a medium degree for Class 35, and a low degree for Class 39. They were considered not similar for Class 21. 

Distinctiveness and similarity of marks

The hearing officer ruled as follows: 

  • JACK DANIELS: has a very high degree of overall distinctiveness for whisky and a high degree of overall distinctiveness for whisky-based beverages; however, it has a low degree of similarity to the JACK & VICTOR mark.
  • JACK: has a very low degree of overall distinctiveness and a medium degree of similarity to the JACK & VICTOR mark.
  • JACK ROCKS: has an average degree of overall distinctiveness but a low degree of similarity to the JACK & VICTOR mark.

Likelihood of confusion

Jack Daniel's claimed that there was a likelihood of indirect confusion between the marks. Indirect confusion occurs where the average consumer does not mistake the marks for one another but nonetheless considers that they come from the same or economically linked undertakings. 

The hearing officer concluded that there was no likelihood of confusion, whether direct or indirect, for any of the goods and services, even those that are identical. The differences between the marks, particularly the conceptual differences, were sufficient to rule out any confusion. 

Regarding indirect confusion specifically, the hearing officer held that:

  • "…the differences are such that there is, in my view, no proper basis for concluding that “JACK & VICTOR” is a plausible brand evolution of the “JACK DANIEL’S” mark, or vice versa: it would not be usual to drop a distinctive part of one trade mark and replace it with another, different, distinctive element.". 
  • While JACK alone is similar to an average degree to the JACK & VICTOR mark, the latter is a "…logical unit which conveys the image of two individuals, named JACK and VICTOR, together and there is no clear reason why these names would be perceived as two different brands juxtaposed: it is not, for example, an obvious house mark/sub-brand combination or a house mark with an invented word."

Family of marks

There was also a family of marks argument on which the hearing officer said, "…despite the presence on the market of four marks which feature the common word “JACK”, I am not persuaded that the average consumer would consider the contested mark to be a part of that family. I do not accept …  that the contested mark mimics the structure of the marks in the family: whilst some of the earlier marks begin with “JACK”, that is the only similarity, whereas the differences are significant. The distance between the contested mark and the family of earlier marks is too great for the average consumer to attribute the use of “JACK” in the contested mark to more than coincidence. Even assuming that all of the marks relied upon are part of the family, I reach the same conclusion."

Passing off

For similar reasons, the passing off claim also failed.

Unfair advantage

Although the JACK DANIEL'S mark had a reputation in the UK, there was no unfair advantage, the hearing officer commenting that, "Any brief wondering about a connection will be swiftly dismissed because of the dissimilarities between the marks, which will cause the consumer to conclude that these are two unconnected brands which happen to include the name “JACK”. It will not result in a leg up for the applicant’s mark on the basis of the “JACK” mark’s reputation, whether by means of a marketing advantage or an image transfer." 

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