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Protecting Beverages Brands for Growth

How the Sector has Changed Trade Mark Law

Date 10 September 2024

Aaron Newell

anewell@jakemp.com

www.jakemp.com

Regulated by IPReg

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Hello!

Aaron Newell, Solicitor (UK, Canada, Australia, Ireland), Trade Mark lawyer

J A Kemp - IP Specialist law firm (Trade Marks, Patents, Designs, Copyright, Plant Breeders’ Rights, Litigation)

London, Paris, Oxford, Cambridge + International Network

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It’s Harder Than Ever to Get a Registered Trade Mark For Beverages

Why is that?

Simple ideas for managing risk

This is a bad news presentation

I initially thought the presentation should be about identifying IP, holding up a bottle – this is your name, this is your logo, you file a TM for that, a TM for that

But everyone here knows what their names and logos are and it’s probably not the first time anyone has thought about filing a TM application

There’s lots of interesting stuff going on in respect of lookalike branding that does not copy a name or logo but rather the “feel” of a product – but that’s a longer presentation

So I thought what could actually be helpful, and landed on the fact that the beverage space is actually a volatile space for trying to get trade mark protection right now

I’m going to try to explain why that is

And then briefly discuss some ideas for managing risk and therefore budget

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“Goods and Services”

You have to tell the TM Office what goods / services you want to protect

“Nice Classification System” (started in 1957, now in 12^th edition)

45 “Classes” / Categories of products and services for ease of administration

You normally file a TM application with the government office in the country where you want to protect your brand

In the UK it’s the UK IPO

When you file the application you have to indicate the trade mark, and also tell the Office what goods and services you want to protect it for

For TMs, Goods and services are divided into 45 groups called “classes”

This is for ease of administration – the offices have to prevent similar marks from being registered for overlapping products and services. This helps them categorise and know where to look for overlap.

They also charge more for each class. Lawyers have been lobbying for new classes to be added. That only happened once in 2002.

They used to revise it every 5 years, but now they revise every 3 years

Recent developments include “pasties” in the clothing class, edible gold in one of the food classes, jewelry for pets, products authenticated by NFTs

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Class 3 – soaps, perfumes, etc.

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Class 18 – bags, backpacks, etc.

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Class 25 – clothing, footwear, headgear

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Classes 35 / 41 / 43 �retail / culture and entertainment / bar services

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Beverages – Split Across Two Classes

Class 32 – beers; non-alcoholic beverages (includes “no alcohol” and dealcoholized)

Class 33 – alcoholic beverages (including “low alcohol”); wine, spirits, liqueurs, ciders

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Why are beverages split? ��1963: “non-alcoholic wine is grape juice”

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Thanks for the history lesson

Q: Why does this matter?

A: Risk management

Avoiding objections
Avoiding disputes
Not wasting ££/$$

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Historically Courts Divided Beverage Categories �Even in the same classes

Wine (33) not similar to whisky (33), rum (33) or beer (32)

Tequila (33) not similar to beer (32)

Whisky (33) not similar to beer (32)

Similar marks allowed to co-exist in these and similar situations

Wine not similar to whisky
Wine not similar to rum
Wine not similar to beer
Tequila not similar to beer
Whisky not similar to beer

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More recently – Convergence, Blurred Boundaries

More recent case law:

“[back then] the market in the UK was viewed as being rather different…”

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Case Law Reflecting Reality

“

The UK has the closest gap between replacement of alcoholic and non-alcoholic drinks, suggesting the category is more about alcohol replacement in this market than in others.

“

IWSR: https://www.theiwsr.com/key-statistics-the-no-alcohol-and-low-alcohol-market/

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Going back to Historical Co-Existence:

Wine not similar to whisky, rum or beer

Tequila not similar to beer

Whisky not similar to beer

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Historical Vs Current “Conflict”

Wine not similar to whisky, rum or beer

Tequila not similar to beer

Whisky not similar to beer

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Historical Vs Current “Conflict”

Wine not similar to whisky, rum or beer

Tequila not similar to beer

Whisky not similar to beer

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Historical Vs Current “Conflict”

Wine not similar to whisky, rum or beer

Tequila not similar to beer

Whisky not similar to beer

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Historical Vs Current “Conflict”�More recent cases:

Mostly everything in Class 33 similar to everything else in 33

Tequila not similar to beer

Whisky not similar to beer

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Historical Vs Current “Conflict”�More recent cases:

Mostly everything in Class 33 similar to everything else in 33

Most of 32 is similar to most of 33

Whisky not similar to beer

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Historical Vs Current “Conflict”�More recent cases:

Mostly everything in Class 33 similar to everything else in 33

Most of 32 is similar to most of 33

Alcohol free wines (32) similar to wines (33)

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Much more “Conflict”, Less Co-Existence�More recent cases:

Mostly everything in Class 33 similar to everything else in 33

Most of 32 is similar to most of 33

Alcohol free wines (32) similar to wines (33)

Non-alcoholic cocktails, non-alcoholic fruit cocktails; non-alcoholic cocktail mixes (32) similar to wines (33)

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Much more “Conflict”, Less Co-Existence �More recent cases:

Most of 32 is similar to most of 33

Alcohol free wines (32) similar to wines (33)

Non-alcoholic cocktails, non-alcoholic fruit cocktails; non-alcoholic cocktail mixes (32) similar to wines (33)

Non-alcoholic cider (32) similar to wines (33)

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Much more “Conflict”, Less Co-Existence�More recent cases:

Alcohol free wines (32) similar to wines (33)

Non-alcoholic cocktails, non-alcoholic fruit cocktails; non-alcoholic cocktail mixes (32) similar to wines (33)

Non-alcoholic cider (32) similar to wines (33)

Non-alcoholic liquors / spirits (32) similar to wines (33)

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Much more “Conflict”, Less Co-Existence�More recent cases:

Non-alcoholic cocktails, non-alcoholic fruit cocktails; non-alcoholic cocktail mixes (32) similar to wines (33)

Non-alcoholic cider (32) similar to wines (33)

Non-alcoholic liquors / spirits (32) similar to wines (33)

Non-alcoholic drinks similar to their alcoholic counterparts

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Much more “Conflict”, Less Co-Existence�More recent cases:

Non-alcoholic cider (32) similar to wines (33)

Non-alcoholic liquors / spirits (32) similar to wines (33)

Non-alcoholic drinks similar to their alcoholic counterparts

Even waters (32) similar to Wines, spirits and liqueurs (33)*

(*not always the outcome, but sometimes; inconsistency on the fringes now more common)

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Historic Vs Current “Conflict”

From recent case law (O-438-20, Myth):

“

Given that the applicant’s goods are nonalcoholic versions of the opponent’s goods, the average consumer may choose, for example, for health reasons or lifestyle choices, the applicant’s [alcohol-free] goods instead of the opponent’s [alcoholic] goods or vice versa.

“

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Inherently Riskier Landscape for Beverage Trade Marks

Tribunals used to see different drinks categories as “separate”, and alcohol content was a distinguishing factor

Similar (and even identical) trade marks could co-exist

Now the tendency is toward convergence

It’s therefore harder to avoid trade mark issues

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It is Now Harder to Avoid Trade Mark Issues

More obstacles

More likely an examiner will “block” your trade mark application

More likely third parties will be able to oppose

Higher infringement risks

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Beyond the UK?

USA – relative consistency, most alcoholic beverages overlap with each other and with their no/low counterparts

EU – significant inconsistency over time, but presence of alcohol now less likely to be a distinguishing factor (Zoraya)

UAE – alcoholic beverages not accepted, very few class 33 TMs have been registered, 32 is crowded as a result

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How to Navigate and Futureproof

Careful clearance searches – thorough is better

Subject to searches, consider filing in both 32 and 33 – “Low” or “No” ABV can vary by country – 2% is 32 in one territory, 33 in another – makes searching more important

Plan ahead and use priority claims to “smoke out” objections before committing ££/$$ to international TMs

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How to Navigate and Futureproof

Careful clearance searches – thorough is better

Subject to searches, consider filing in both 32 and 33 – what is “Low” or “No” can vary by country – you could be in 32 in one territory, 33 in another

Plan ahead and use priority claims to “smoke out” objections before committing ££/$$ to international TMs

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That’s a lot of work, why should I bother?

Investors want IP portfolios and security / freedom to use
Registration is often a defence to infringement claims
TM Rights help keep brands unique and protect reputation
Far easier to rely on a registration than common law rights
International registration makes it easier to expand overseas
There are always opportunists looking to copy…

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VICTOR WEMBANYAMA, Class 32, China�Owner: Meizhou Shunyu New Materials Co., Ltd.

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SWIFTIE, Class 32 and 33, Germany �Owner: DMI GmbH - Distillery & Manufactur International

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BREWPUPS, Class 32, USA �Owner: Mellon Ventures

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Thank you!

Any questions?

anewell@jakemp.com

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