4th February 2016
Can’t we all just get Oolong? A review of recent tea related trade mark decisions
The popularity of tea for the British public does not wane – there has been a recent spate of tea related trade mark decisions from the UK’s IPO.
1. The Cornish Tea & Cornish Coffee Co Ltd successfully opposed Cornish Tea Company Limited’s trade mark application for THE CORNISH CHINA TEA COMPANY as it was visually, aurally and conceptually similar to its earlier UK registrations containing the element CORNISH TEA. The earlier marks were registered for tea, which is a little surprising as TEA featured in the marks, meaning the marks had a low degree of inherent distinctiveness for tea. However, this was not enough for the applicant to be successful; identical goods and the visually similarity meant there was a likelihood of direct confusion (despite no evidence being provided of that confusion). Also of note was, in the view of the IPO, the registration of a company name does not offer any trade mark (or priority) rights per se.
2. Mariage Frères S.A. successfully defended an opposition of CASABLANCA for tea brought by TWG Tea Company Pte Ltd on the basis of existing unregistered rights in WEEKEND IN CASABLANCA for loose leaf tea and filing in bad faith. Despite modest sales volumes, goodwill in TWG’s mark WEEKEND IN CASABLANCA for tea was sufficient for it to be protected under passing off. However, due to the manner of overall use, that goodwill was associated with WEEKEND IN CASABLANCA not CASABLANCA by itself. Further, Mariage Frères S.A. established it was the first to use CASABLANCA for tea and had built up its own goodwill in respect of tea in the UK. As it was the senior user of the CASABLANCA mark for tea and tea tins, there could be no legitimate complaint of passing off by TWG as the junior user.
3. Char (UK) Ltd successfully defended the invalidity action against its OXFORD TEAS trade mark registration for tea and iced tea and successfully opposed Elgin Beverages Limited’s application for its OXFORD DRY ICED TEA logo for iced tea. Fortunately for Char as it filed no evidence for the acquired distinctness, the mark had sufficient inherent distinctiveness and OXFORD was not associated in the mind of the general public with tea, supported by the mark not being an indication of geographical origin of the tea. Further, the marks were aurally and visually similar and conceptually identical (both being dominated by OXFORD) and both for iced tea, therefore there was held to be a likelihood of confusion between the marks.
4. Tea Retail Limited t/a We Are Tea was not successful in the defence of its CHARITEA mark in invalidity proceedings brought by LemonAid Beverages GmbH. The mark was invalid due to non-use as the evidence failed to show real commercial exploitation of the mark in the UK market for tea and tea-based products – there was only an extremely small level of sales in a single tea shop, coupled with the lack of advertising and promotional activity. The case highlights the benefit of professional advice in the conduct of such proceedings. The trade mark owner represented himself and made written submissions which were a mixture of submission (commentary on the matters involved in these proceedings) and evidence (facts about his shop and business ethos). Only the submissions could be considered; the evidence could not be taken into account. In the interests of fairness, a request to file further evidence should have been made well in advance of the hearing (which he did not do), not least so that the applicant could have considered it and responded to it, if necessary.