In a David and Goliath legal showdown, Dark Sky Brewery Ltd (‘DSB’) has emerged victorious in a trade mark battle against spirits giant Campari America LLC (‘Campari’) where the IPO confirmed that beer is not in fact vodka.
The craft brewery, known for its innovative and unique beer creations faced an opposition to its trade mark application for a logo in the words “DARK SKY BREWERY”. It was awarded with legal costs and compensation.
What is a trade mark opposition?
Upon application, your trade mark is examined by the Intellectual Property Office (IPO) and subsequently published in the Online Trade Mark Register for opposition purposes. Throughout the two-month opposition period, any third party may attempt to prevent its registration by:
· Filing a notice of threatened opposition with the IPO – a warning that a third party has concerns with your trade mark application – which extends the opposition period to three months; and/or
· Filing an opposition with the IPO – trying to stop your trade mark application from becoming registered. If the parties can not agree on a solution without recourse to proceedings the IPO will make a binding decision.
What happened in this case?
On 21 June 2022 DSK applied to register the trade mark logo for, amongst other products and services, beers; beer; malt beer; craft beers; beer and brewery products (class 32). On 10 October 2022, Campari opposed the application for goods in class 32 by relying on three of their registered trade marks in the words/logo “SKYY”, registered for beers, alcoholic beverages, distilled spirits and vodka.
Campari submitted that DSK’s application was similar to their earlier registered trade marks with the result that there is a likelihood of confusion on behalf of the public. They also submitted that they have a reputation for the goods they sell under their registered trade marks and the DSK mark would take unfair advantage of/be detrimental to their distinctive character and repute. The question was whether the IPO registrar agreed based on the evidence provided to him.
What was the decision?
IPO registrar S Wilson said the brands’ logos were similar to only a “low degree” and added:
· “Bearing in mind the visual differences between the marks, and the predominantly visual purchasing process, I do not consider that the marks are likely to be mistakenly recalled or misremembered as each other... In my view, there is no likelihood of direct confusion.”
· “I have no evidence before me to suggest that the producers of these goods are likely to coincide, nor do I consider it likely. In licensed premises, spirits are typically displayed in bottles behind a bar, whilst beer would be on taps at the front of the bar or in fridges.”
Campari was ordered to pay DSK £1,026 within 21 days (legal costs of £950 and £76 to reimburse DSK as a litigant in person).
What’s the effect of the IPO Tribunal cost capping?
General practice at the IPO is that costs should be determined by reference to a scale, with an underlying “contribution-not-compensation” approach. This provides transparency to parties about potential liabilities and enables parties with fewer resources to litigate trade mark disputes. However, the IPO retains its discretion to award costs “off the scale” to deal proportionately with unreasonable behaviour.
Conclusion
Despite the vast difference in size and resources between the two companies, DSB’s commitment to defending its brand and reputation ultimately led to a resounding triumph in the IPO Tribunal. It was successful, not only in defending its application but also in recovering costs from the other side.
This victory serves as a testament to the perseverance and importance of protecting SMEs from corporate overreach in the fiercely competitive industry of alcoholic beverages. If you have received a notice of threatened opposition, or want to discuss brand protection in general then contact our expert intellectual property team today.
