Confirmation of who constitutes average whisky consumer helps resolve dispute

Reasonably well informed, reasonably observant ... average

Well-dressed man drinks whisky in expensive flat. Photo by Shutterstock

The average consumer of Scotch whisky is reasonably well informed and reasonably observant and circumspect member of the general public who has an average level of attention, the EU's General Court has confirmed in ruling over a trade mark dispute.

The determination by the Court helped whisky manufacturer William Grant & Sons to successfully oppose the registration of the mark 'Clan' as a trade mark by Speciality Drinks. William Grant & Sons produces 'Clan McGregor' branded whisky and owns a trade mark for that name. Pinsent Masons, the law firm behind Out-Law.com, represented William Grant & Sons in the case.

An application by Speciality Drinks to register the Clan mark as a trade mark was rejected in the opposition division within the EU Intellectual Property Office (IPO) in 2013. The company's appeal against that decision to the EUIPO's appeal board was then dismissed in 2015. However, Speciality Drinks lodged a further appeal before the General Court, but that has now been dismissed too.

The General Court's ruling suggests that it will be difficult for a business to show that the average consumer of any alcoholic drink is a person who gives a high level of attention to that particular type of drink, said IP disputes expert Jim Cormack of Pinsent Masons.

"The General Court has rejected an argument that whisky is a special product because the customers are connoisseurs who apply a high level of attention, and are therefore less likely to be confused by similar trade marks," Cormack said. "The Court held that the fact that although this description may apply to a limited number of the consumers, it could not displace the application of the general principle that alcoholic drinks are mass market goods."

"The Court does contemplate that the argument may be stronger if it can be shown on the facts that the products in question exclusively appeal to a specific category of knowledgeable consumers, but that is going to be a very high evidentiary burden to meet," he said.

Trade mark law is designed to help brand owners protect against the unfair exploitation of their brand by other companies where those rivals use branding that is identical or similar to the marks they have registered. Whether or not rival branding unfairly exploits the rights owned by trade mark holders is determined by considering how an 'average consumer' of the type of product at issue perceives the branding.

If the average consumer would be said to be confused as to the origins of a product because of its branding, a trade mark holder can bring a claim for trade mark infringement or alternatively oppose the registration of those rival marks as trade marks.

In its ruling the Court admitted some Scotch whisky consumers could be classed as connoisseurs. However, it rejected Speciality Drinks' claim that those people were the average consumer of Scotch whisky.

Although some alcoholic drinks, including some sub-categories of Scotch whisky, might be targeted at "a limited number of connoisseurs or even collectors who would show a high degree of attention", due to the rarity or high price of those goods, "that finding cannot be automatically valid as regards the average consumer of the alcoholic drinks at issue", the General Court said.

Businesses need to have evidence to show why the particular alcoholic drink they refer to should be treated differently on the issue of who the average consumer of that product can be said to be, it said.

The Court said:" [Speciality Drinks] has not established that those goods are not directed at the general public, but exclusively to a specific category of consumers. On the contrary, its arguments are restricted to being either generalisations concerning goods corresponding to the description 'Scotch whisky', or specific information which nevertheless relates to goods other than the goods covered by [the 'Clan' sign and 'Clan MacGregor' trade mark]."

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