Jim McEwan, a well-known multi award winning whisky distiller from the Isle of Islay has found himself in a legal battle with Charles Wells, the company behind McEwans lager, after they threatened to prevent his proposed whisky venture from taking off.
The owner of McEwans Lager remonstrated against the whisky maker trade marking his name for his prospective whisky brand. They believed there was an overlap with their mark, "McEwan's" which is registered in class 33 (amongst others) for alcoholic drinks including Scotch whisky, and that the two marks could be erroneously used thus causing a level of confusion in the minds of consumers. Charles Wells were concerned that Mr McEwan would subsequently benefit from consumers mistakenly believing that the two businesses were related and were concerned that their well-known brand, which has previously sponsored Glasgow Rangers football team, would be tarnished.
Their opposition was rejected when the UK intellectual Property Office (IPO) shunned the argument that the two brands would be confused with one another. The IPO held that the average consumer is educated at a level that would enable them to distinguish between these two marks.
The IPO further found that, although the mark might cause you to think about the opponent's mark it was not enough to cause the consumer to believe that the marks were related or linked and therefore there would be no damage to the opponent's trade mark. As well as refusing the opposition, Charles Wells were ordered to pay Mr McEwan's costs of the case.
This case demonstrates the importance of having a proactive strategy for protecting your IP, but one that is crucially flexible enough to adapt to the circumstances of any dispute. Commenting after the ruling Charles Wells had stated that once being made aware of Mr McEwan's applications they had objected to them in line with their 'standard practice'. They should have been aware however that their trade mark cannot stop somebody from using their own name on a product as Mr McEwan is doing in this instance. This opposition therefore seems to have been destined to fail regardless of any similarities between the two marks and Charles Wells would have been better in this instance deviating from their standard practice and trying to reach a commercial agreement with Mr McEwan that suited all parties.in: News, Trade Marks