In 2016, Japanese retailer
After successfully defending the opposition before the
The key points of interest were:
Is "ISETAN TARTAN" deceptive?
SWA relied on Section 7(4)(b) of the Trade Marks Act (TMA) as a ground of opposition, which prohibits registration of a mark of such nature as to deceive the public, for example as to the geographical origin of the goods or services applied for. Hence, the main issue was whether use of "ISETAN TARTAN" for whiskies, which do not originate from
IPOS Decision
The IPOS' Registrar decided that the use of the Mark for non-Scottish whiskies would not deceive the public as it does not cause an expectation that the goods originate from
Assessing "ISETAN TARTAN" as a whole, the Registrar found that it does not contain any symbols or designs representative of
In comparison, the
In response to the argument that "
As such, the judge held that "ISETAN TARTAN" should not be registered in Class 33.
Is 'ISETAN TARTAN' a Geographical Indication?
SWA also relied on section 7(7) of the TMA, which bars registration of marks containing a Geographical Indication (GI) for wines or spirits, if such mark would be used for wines or spirits not originating from the place indicated. Further, SWA relied on section 7(5) of the TMA read with section 3 of the Geographical Indications Act (GIA), which together bar registration of a mark if it involves use of a GI for goods which did not originate in the place indicated by the GI, in a manner which misleads the public as to their geographical origin.
Both tribunals dismissed these grounds of opposition as "ISETAN TARTAN" and "TARTAN" do not meet the definition of GIs in the GIA, namely indications which identify goods originating from a place, where a given quality, reputation or other characteristic is essentially attributable to their origin. In this case, there was no evidence of the Mark being used to identify the origin of the goods or their characteristics. The judge also stated that "TARTAN" is especially associated with
At the
As SWA was unable to show that use of "ISETAN TARTAN" or "TARTAN" amounted to use of a GI, the grounds of opposition based on sections 7(7) and 7(5) of the TMA were dismissed.
Conclusion
Conflicts with prior marks and issues of distinctiveness are often a trade mark owner's main concerns in securing registration, but this opposition highlights the risk of refusal on the ground of deceptive nature, even if the mark does not expressly designate any particular location. In these situations, a useful option may be to consider the incorporation of a distinctive house mark, but even so such an invented element could nonetheless be outweighed by the 'deceptive' indicia.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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