The Controller of the Irish Patents, Designs and Trade Marks Office (the “Controller”) recently handed victory to an Irish publican (“the Applicant”) who was seeking to register LYNCH’S TULLAMORE BREW and its slightly different variation LYNCHS TULLAMORE BREW as Trade Marks for beer, stout, ale and larger. William Grant & Sons Irish Brands Limited (“William Grant”), the owner of the well-known whiskey (note in Ireland we spell ‘whiskey’ with an ‘e’) brand, TULLAMORE DEW opposed the Applicant’s application.
The Applicant had been operating a pub in Tullamore, which is a town in the midlands of Ireland. He had a keen interest in micro-brewing. It was therefore his intention to brew his own branded beer under marks he was seeking to register.
William Grant based its opposition on the grounds that the registration of LYNCH’S TULLAMORE BREW and LYNCHS TULLAMORE BREW would give rise to a likelihood amongst consumers with its TULLAMORE DEW trade mark. It was also claimed that LYNCH’S TULLAMORE BREW and LYNCHS TULLAMORE BREW would, without due cause, take unfair advantage of, or be detrimental to, the distinctive character and reputation of the TULLAMORE DEW trade mark. Thirdly, it was claimed that, on the basis of the goodwill/reputation of the TULLAMORE DEW brand, a misrepresentation would be caused as to the origin of the Applicant’s goods.
In assessing the ‘likelihood of confusion’ claim, the Controller first assessed whether the goods of the Applicant’s application were similar to whiskey. The Controller found that there were similar, but not complimentary. The Controller was of the view that consumers are adults who have distinct preferences when it comes to purchasing alcohol. He stated “if someone’s favourite beer was unavailable in a bar, restaurant or off-licence, it is highly unlikely that they would select a whiskey instead.
In turning to consider whether the Applicant’s marks were similar to William Grant’s TULLAMORE DEW trade mark, the Controller held that “Tullamore” and “Brew” were not very distinctive; being merely references to the type of goods and location where they were produced. The Controller instead focussed on the inclusion of “Lynch’s/Lynchs” within the mark/s the Applicant was seeking to register and held that “sufficient distance is put between the respective mark by the presence of the word ‘Lynch’s’. The Controller concluded that the average consumer was therefore not likely to confuse of the Applicant’s goods or believe that they were produced by William Grant.
On the ‘unfair advantage/detriment to distinctive character’ claim, the Controller’s finding turned on the requirement of ‘due cause’ within the relevant section of the Irish Trade Marks Act, 1996. He held that the Applicant had ‘due cause’ to use his marks because Lynch was his family name. The Applicant also had due cause to use ‘Tullamore’ as this was the location where his bar was located. As ‘due cause’ was satisfied, the Controller did not have to consider ‘unfair advantage/detriment to distinctive’ character. Lastly, as there no ‘likelihood of confusion or association’ between the Applicant’s and William Grant’s marks, a misrepresentation as to the origin of the Applicant’s goods could not follow.
Ultimately, the Controller found in favour of the Applicant due to the presence of his name within the marks he was seeking to register. The Controller is likely to have found otherwise if the Applicant had registered TULLAMORE BREW on its own. While geographical place names can be difficult to register in Ireland, registration will be granted on the basis of long use. On this basis, TULLAMORE DEW is a highly distinctive trade mark for whiskey. It would therefore be a foolish applicant who seeks to register a similar mark for any type of alcohol product without a distinctive element.