O-631-20 TRADE MARK ACT 1994 IN THE MATTER OF APPLICATION NUMBER: 3459060 BY MICHAEL MACKENZIE TO REGISTER THE FOLLOWING TRADE MARK IN CLASS 33: INBHIR NIS Background 1. On 17 January 2020, Mr Michael MacKenzie (‘the applicant’) applied to register the above trade mark for the following goods: Class 33 :Whisky; Malt whisky; Scotch whisky; Whiskey [whisky]. 2. On 22 January 2020, the Intellectual Property Office (‘IPO’) issued an examination report in response to the application. The examination report contained objections under Section 3(1)(b) and 3(3) (b) of the Trade Marks Act 1994 (‘the Act’). The letter read as follows: “Absolute grounds for refusal Section 3(1)(b) and (c) The application is not acceptable in Class 33. There is an objection under Section 3(1)(b) and (c) of the Act. This is because the mark consists exclusively of a sign which may serve in trade to designate the geographical origin of the goods e.g. Inbhir Nis is the Scottish Gaelic name for Inverness. Absent any unique or distinctive element the average consumer is only going to perceive the sign as an indication that the whisky emanates from Inbhir Nis/Inverness rather than a badge of trade origin capable of distinguishing your whisky from those provided by other undertakings. Section 3(3)(b) The application is not acceptable in Class 33 as there is an objection under Section 3(3)(b) of the Act. This is because Inbhir Nis is the Scottish Gaelic name for Inverness and so the mark indicates that the whisky is from Scotland. Scotland has a reputation in relation to whisky and the average consumer would be deceived if the whisky was not produced in Scotland. Overcome Objection in relation to Section 3(3)(b) The objection relating to Section 3(3)(b) can be overcome by adding the following limitation (please note that this will not overcome the Section 3(1)(b) and (c) objection); Whisky;Malt whisky;Scotch whisky;Whiskey [whisky]; but in so far as whisky is concerned, only Scotch whisky produced in Scotland.” 3.The Section 3(1) (b) and (c) objection was thus raised on the basis that the mark was devoid of any distinctive character, as the words ‘Inbhir nis’ would simply be seen as the Scottish Gaelic term for ‘Inverness’, being a geographical place name which could indicate e.g. the geographical origin of the goods. 4.The Section 3(3)(b) objection was raised because the mark would be perceived as indicating the goods were from Scotland. Scotland has a reputation for whisky and whisky based drinks having a certain quality and the average consumer would be deceived if the whisky was not produced in Scotland. 5. A request for a hearing was filed by Mr MacKenzie. At the hearing, which was held on 3 March 2020, this application was considered at the same time as 3459052, ‘Invernes’, which is the subject of a separate decision issued under reference BL O/545/20. 6. At the hearing Mr MacKenzie explained he was the third generation of his family to be involved in the Scotch whisky industry as a distiller. He was born and raised in Inverness and he had been involved with distilling since 1983. He intended to bring a new blended single malt whisky to market under this brand. The product is blended from whisky distilled in the Inverness and Inverness shire area and is bottled in Inverness. He was aware of the geographical significance of the name, but other Scottish place names had been registered, such as Tobermory and Oban. He has previously applied for ‘Old Inverness’ which had been published in the Trade Marks Journal but had been withdrawn following publication because of a threatened opposition by an earlier rights holder. The earlier rights holder had indicated they would not oppose an application for ‘Inverness’ solus. 7. In my hearing report and decision dated 3 March 2020, I maintained the objections under Sections 3(1)(b) and (c) and 3(3)(b) on the following basis: “I explained that I was not aware of the circumstances surrounding the acceptance of previous geographical names such as Tobermory or Oban. Where the geographical place name has a reputation for the goods claimed in the specification as is the case in this application, then an objection is appropriate. This is because Inbhir Nis is the Scottish Gaelic name for Inverness and Gaelic words are treated the same as the equivalent English word when they are being considered under the Trade Marks Act. Inbhir Nis/ Inverness has a population of 70,000 and is the capital of the Highland region of Scotland. Scotland has a significant reputation for Scotch whisky and with a number of distilleries in the Inverness area there is a need to keep the name Inbhir Nis/Inverness free for other traders to legitimately use in the course of trade as an indication of the origin of their goods. The acceptance of his previous mark ‘Old Inverness’ was because it contained a representation of Inverness Castle which added the necessary ‘spark’ of distinctive character to the mark as a whole. Section 3(1) of the Trade Marks Act specifically excludes the acceptance of marks consisting exclusively of geographical names when the locality has a reputation for those goods. The only way to overcome such an objection would be to prove that the trade mark has acquired a distinctive character through the use made of it over a number of years. I understood that the mark has not yet been used, so this is something that may be considered in the future. The refusal of this application does not prevent the use of the mark as an unregistered trade mark, but consideration should be given to adding a distinctive logo to the word if you wish to protect the brand while a reputation is built up. The objection to the mark in this application must be maintained for the reasons given above, but should you wish to consider filing a fresh application you must consider whether the sign, as a whole, will identify the trade source of the goods to the average consumer. For example, the sign ‘Asda Baked Beans’ contains the descriptive element ‘baked beans’ but consumers will be aware of who is providing the goods because of the word ‘Asda’ appearing in the mark.” 8. I should add that, as far as the objection under section 3(3)(b) was concerned, as with the co-pending application, 3459052, Mr MacKenzie agreed to add the limitation to the specification to overcome that objection as his goods were genuine Scotch whisky, produced in Scotland. I will therefore say no more about this objection, assuming the offer of a limitation, on the same lines as 3459052 would have overcome it, had the application not faced a terminal objection under section 3(1)( c) and (b). 9. The mark has not been used prior to the date of filing and Mr MacKenzie would not be able to demonstrate acquired distinctiveness through use. As the objection was maintained in the prima facie case the application was formally refused at the same time as the issue of my hearing report. 10. Mr McKenzie then filed a Form TM5 for a full statement of grounds which, although there was some question about when it was received by the IPO and the fee paid these have been resolved in the applicant’s favour. I am required, then, under Section 76 of the Act and Rule 69 of the Trade Marks Rules 2008, to state in full the grounds of my decision and the material used in arriving at it. I might add that a Form TM55 was also filed at the same time, but this was premature as an appeal is not generally possible until the full statement of grounds has been sent to the applicant. 11. I will now give my reasons in full as to why I refused the application. Decision 12. The relevant parts of Section 3 of the Act read as follows: “3.-(1) The following shall not be registered – (a) … (b) trade marks which are devoid of any distinctive character, (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, (d) … Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.” The relevant legal principles – Section 3(1) (c) 13. There are a number of judgments of the Court of Justice of the European Union (“CJEU”) which deal with the scope of Article 3(1)(c) of the Directive and Article 7(1)(c) of the Regulation, whose provisions correspond to Section 3(1)(c) of the UK Act. I derive the following main guiding principles from the cases noted below: • Subject to any claim in relation to acquired distinctive character, signs and indications which may serve in trade to designate the characteristics of goods or services are deemed incapable of fulfilling the indication of origin function of a trade mark (Wm Wrigley Jr & Company v OHIM, C-191/01P ‘Doublemint’, paragraph 30); • Article 7(1)(c) (section 3(1)(c)) pursues an aim which is in the public interest that descriptive signs or indications may be freely used by all (Doublemint, paragraph 31); • It is not necessary that such a sign be in use at the time of application in a way that is descriptive of the goods and services in question; it is sufficient that it could be used for such purposes (Doublemint, paragraph 32); • It is irrelevant whether there are other, more usual signs or indications designating the same characteristics of the goods and services.