Asahi Holdings UK Limited has successfully defended an opposition against its UK application for the mark SNOW GLOBE. At first glance, the decision may seem surprising to some, but it reinforces some fundamental and, often overlooked, principles of trade mark law.
The contested application is UK Application No. 3288786 which was filed on 8 February 2018 by Fuller Smith & Turner Plc. The application was later assigned to the entity now known as Asahi Holdings UK Limited. The mark applied for is SNOW GLOBE and the application covers ‘beer, ale, lager, stout and porter; non-alcoholic beers.’ in class 32.
Opposition was filed by China Resources Snow Brewery (Liao Ning) Company Limited based on a number of earlier rights in the mark SNOW, all registered in relation to beer and other beverages in class 32.
The Opponent claimed that its SNOW beer is the number 1 beer brand in the world, although this assertion appears to be primarily based on sales in China. According to the evidence filed, SNOW beer was scheduled for launch in the UK in January 2018, just one month before the contested application was filed and at the very end of the five year use period.
Despite ultimately going on to accept that there was genuine use of the mark based on invoices showing sales of 7,436 units destined for the UK, the Hearing Officer first raised a number of criticisms of the evidence filed. In particular, the Hearing Officer indicated that, other than five invoices to its distributor, there was no evidence of actual sales in the UK. It was suggested that the production of accounts, turnover, invoices and receipts to retailers and consumers are fairly standard pieces of evidence to satisfy the use requirement, but were not provided. In addition, menus or price lists showing the goods offered for sale to support the claim the goods had been sold in restaurants were found to be lacking. The Hearing Officer opined that this kind of evidence should have been fairly easy for the Opponent to produce, especially bearing in mind its size and sophistication as a business.
The comments of the Hearing Officer serve as an important reminder of the need to put forward good quality and focused evidence. Over recent years, we have seen a string of high profile brands criticised in opposition proceedings for failing to file relevant evidence and this has led to a number of surprising decisions. Famous brands must be careful to ensure they still satisfy use requirements with hard evidence and not simply try to rely on assertions in witness statements about their repute, particularly where that repute is outside of the relevant territory, as was the case in this opposition.
The Hearing Officer accepted that the five invoices showing sales for goods to be shipped to the UK right at the end of the relevant five year period were sufficient to show genuine use in the UK and supported the earlier UK rights relied upon. This use was not sufficient to support the EU registrations relied upon which were therefore disregarded during further examination of the opposition.
The Hearing Officer made his decision based on earlier registrations for these marks, which were deemed to present the Opponent’s best case:
Both of these marks were registered in relation to beer. The Hearing Officer easily found the goods to be identical or highly similar, quickly dismissing the Applicant’s submissions that beer is dissimilar to ale, lager, stout and porter as well as to non-alcoholic beer. The marks were found to be visually and phonetically similar due to the inclusion of the earlier mark SNOW at the beginning of the applied for mark. Conceptually, it was noted that, taken as whole, the mark SNOW GLOBE had a different meaning to SNOW, but nonetheless conceptual similarity was found on the basis that both marks “allude to something wintery”.
Things seemed to be going well for the Opponent until this point, but the decision took a sudden turn in favour of the Applicant at the last hurdle. When making a global assessment, the Hearing Officer found that, despite the similarity of the marks and the identity or high similarity of the goods, there was no likelihood of confusion. This finding was driven by the fact SNOW did not retain an independent and distinctive character within the applied for mark SNOW GLOBE which, taken as a whole, had a different meaning to the components of the mark taken separately. The conceptual meaning of SNOW GLOBE was found to be so strong that it counteracts the similarities of the marks, even for identical goods.
This conclusion might seem surprising at first, but feels like it is the right outcome when you step back and look at the matter globally. The case serves as an important reminder to trade mark owners that the likelihood of confusion must be appreciated globally and it is important not to assume that confusion will automatically be found based on a finding of a similarity of marks and a similarity of goods or services.