In this article, Simon Gapes discusses a recent IP Australia Hearing Office decision confirming the similarity of alcoholic beverages and non-alcoholic beverages for trade mark comparison purposes.
Bickford’s, owner of trade mark registrations for REAL McCOY covering “bourbon whisky; mixed drinks containing bourbon whisky combined with cola” opposed an application filed by Frucor Suntory to register ‘The Real McCoy’, for “fruit drinks and fruit juices including those containing vitamins, minerals or herbs; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages; isotonic beverages (non-medicated); energy drinks; all of the aforesaid goods being in this class”.
The parties’ trade marks are clearly similar, so the primary issue for determination was whether or not the parties’ beverages were similar.
The outcome
The Hearing Officer considered the nature, uses and trade channels of the parties’ beverages, and ultimately found that whisky bourbon was similar to non-alcoholic beverages. Key comments from the Hearing Officer include:
- There is a large and growing presence in the marketplace of non-alcoholic versions of what are traditionally alcoholic beverages, such as non-alcoholic beers, wines and spirits.
- Frucor’s claims for “non-alcoholic drinks” and “preparations for making beverages” encompass non-alcoholic bourbon whisky and non-alcoholic mixed drinks containing non-alcoholic bourbon whisky.
- The uses of non-alcoholic beverages generally are similar, and in many cases the same, as uses of non-alcoholic beverages.
- Alcoholic beverages, their non-alcoholic counterparts, and other non-alcoholic beverages such as soft drinks and juices, are sold in the same trade channels.
Ultimately, Bickford’s succeeded in the opposition.
In summary
While the decision is perhaps not surprising, it reinforces the similarity of non-alcoholic and alcoholic beverages. At a higher level, it highlights the value in considering whether a broad range of goods or services is needed, or whether a narrower range of goods or services of specific interest to the trade mark applicant would satisfy commercial needs.
