A Blurry Decision on Alcoholic Beverage Marks … with a twist of lemon

In Gewei Zhang v QB Trademarks SARL 2023 NZIPOTM 40 the opposition was rejected even though the accepted mark begins with the opponent’s mark and despite the Assistant Commissioner (AC) finding the respective parties goods to be similar.

In January 2022 Zhang’s application for Bloomfield in respect of wine in class 33 was accepted. QB opposed acceptance on the basis of its prior use and registration of the mark BLOOM. QB has used the BLOOM mark for gin products internationally since 2009 and in New Zealand from 2017 and its class 33 registration is in respect of: “Alcoholic beverages except beers, cider, wine-based drinks (spritzer) and aromatized fruit wine-based drinks”.

QB’s registration provided it with its strongest ground of opposition under section 25(1)(b), which can prevent registration if the opposed mark is similar to the registered mark and in respect of the same or similar goods or services if deception or confusion is likely on a notional use basis. In comparing the goods the AC split-up the opponent’s specification into “alcoholic beverages except beers”, “cider” and “wine-based drinks (spritzer) and aromatized fruit wine-based drinks” and found wine to be similar to each of them.

While acknowledging that the opposed mark begins with the opponent’s mark the AC only found a low to moderate visual and phonetic similarity on account of the opposed mark being twice as long and containing three syllables in contrast to one syllable for BLOOM. Regarding the ideas of the respective marks the AC first noted that BLOOM is usually used either as a verb or noun in relation to flowers or blossoms of a plant, although it can also be a surname. The AC somewhat downplayed the conceptual relevance of Bloomfield to flowers by finding it to be an unusual conjunction, with more grammatically usual combinations being “blooming field”, or “field of blooms”. However, the AC still considered there was sufficient conceptual similarity. It was also noted that the surname significance of Bloomfield was heightened at the relevant time due to the prominence of Dr Ashley Bloomfield in the Government’s response to the Covid-19 pandemic.

Regarding the likelihood of deception or confusion amongst a substantial number of persons in the relevant market, the opponent argued that: (i) the marks common feature is the more memorable element; (ii) consumers are likely to overlook differences that are unlikely to override the common distinctive feature; (iii) the common distinctive feature is likely to dominate any imperfect recollection; (iv) that consumers will accentuate BLOOM and slur FIELD, and (v) that consumers may be caused to wonder if the parties are connected. In rejecting the opponent’s contentions the AC merely reiterated the findings of a low similarity between the marks without considering the surrounding circumstances of notional use by consumers in the relevant market. This seems particularly remiss given that at [32] the AC cited the following relevant principles for the comparison of marks from the Court of Appeal decision Pharmazen Limited v Anagenix IP Limited [2020] NZCA 306:

• the Court should consider the marks in their entirety; the overall or net impression of the marks should be considered;
• while differences between two marks may be significant, it is the similarities which are most significant, whether visual, audible, distinctive, or conceptual;
• the impression or idea conveyed by the marks is important in assessing how they will be recalled; the idea of a mark is more likely to be recalled than its precise details;
• comparison is not of the opponent’s mark with the mark of the applicant when taken side by side, but taking into account imperfect recollection in all the circumstances in which the products might be sold; and
• the marks are to be compared as they would be encountered in the usual circumstances of trade.

It is not clear that the AC has given due consideration to these principles when swiftly concluding that there is no reasonable likelihood of deception or confusion. Given the accepted mark begins with the opponent’s mark in the context of a product that can be purchased in noisy environments and/or which can be associated with a hazy memory it would seem that the opponent’s contentions have not been adequately addressed. Perhaps the AC gave more consideration to the impression or idea conveyed by the marks and side by side comparisons of the opponent’s mark with the applicant’s trade mark, however this not entirely clear from the AC’s decision.

Would you like a twist of lemon with that?
However, the AC has misinterpreted the scope of the opponent’s specification. As noted above the opponent’s specification is for “Alcoholic beverages except beers, cider, wine-based drinks (spritzer) and aromatized fruit wine-based drinks”. It is standard for class 33 specifications to include the phrase “Alcoholic beverages except beers”. However, in this case that phrase is followed by a comma, rather than a semi-colon. The lack of a semi-colon in the remaining specification means the exception also applies to the rest of the listed goods, being “cider, wine-based drinks (spritzer) and aromatized fruit wine-based drinks”.

The opponent’s BLOOM mark entered New Zealand via a subsequent designation under the Madrid Protocol, and the New Zealand specification is unchanged from the specification used for the Madrid Protocol filing, which in-turn has an EU trade mark as its ‘home’ or ‘basic’ registration. In this regard it is noteworthy  that QB’s first EU application for the word mark BLOOM was refused after being successfully opposed. The class 33 specification of that application was for “Alcoholic beverages; wines; spirits; liqueurs; cider; cocktails; perry; vodka; rum; tequila; whisky; whiskey; gin; brandy”. QB subsequently filed again for the word mark BLOOM, this time with the specification “Alcoholic beverages except beers”, and this was also opposed (although by different parties). Both oppositions were withdrawn with the main opponent having a German device mark registration that prominently contained the word ‘bloom’ in stylised format for the class 33 goods “cider, wine-based drinks (spritzer) and aromatized fruit wine-based drinks”. Hence, that is why the New Zealand designation also contains that exclusion.

Are the Goods Still Similar?
The scope of QB’s registration needs to be interpreted with due regard to the exclusions, which most relevantly exclude wine-based drinks (spritzer) and aromatized fruit wine-based drinks. Neither of these excluded goods qualify as fortified wine, being wine to which a distilled beverage such as bourbon, gin, rum, vodka or whisky has been added. While not binding on the AC, IPONZ’s practice is that wine is similar to bourbon, gin, rum, vodka or whisky, but wine excluding fortified wine is not similar to bourbon, gin, rum, vodka or whisky. Given that Zhang’s specification is for wine it would still be considered (by IPONZ) to be similar to the remaining alcoholic beverages such as gin covered by QB’s registration. If, hypothetically, the AC had instead allowed the opposition, the AC might have held that Zhang could retain its accepted application by amending the specification to “wine excluding fortified wine”.

Authors: Quinn Miller and Tom Robertson

//piperpat.com/news/article/a-blurry-decision-on-alcoholic-beverage-marks-with-a-twist-of-lemon