Tejas Sateesha Hinder | National Law Institute University, Bhopal | 16th October 2019
Background
Recently, Asahi Holdings UK Limited (hereinafter ‘Asahi’) has succeeded in obtaining a trademark in The United Kingdom, over the mark SNOW GLOBE, despite legal opposition from China based brewery, China Resources Snow Brewery (Liao Ning) Company Limited (hereinafter ‘China Resources’), on the basis of rights acquired earlier in the mark SNOW, all of which were registered with regard to beverages covered under class 32. The application being discussed is UK Application No. 3288786, filed on 8th February, 2018 by Fuller Smith Turner & Plc., later assigned to Asahi Holdings UK Ltd. The application for registration of the mark was made by the company for alcoholic beverages, including beer, ale, lager, stout and porter.
Though this case may seem to be wrongly decided prima facie, brings back to light and emphasizes on fundamental but overlooked principles of trademark law.
Evidence of Usage
The claim of China Resources in the present case was that SNOW beer was the topmost beer brand in the world, which appeared to be a claim made on considering its sales in China. In addition to this, proof was provided by China Resources to indicate the launch of SNOW beer in the UK just before the filing of the contested application, which also marked the end of the period of five years of usage.
A number of criticisms were raised by the Hearing Officer with regard to the sale of SNOW beer in the UK before considering the genuine use of the mark granted. The invoices provided showed that 7436 units were to be sold in the UK.[1] However, the Hearing Officer deemed this to be fallacious due to absence of proof to indicate actual sales in the UK. The Hearing officer went on to state that the opposition would have been justified in their claim if evidence such as production of accounts, turnover, invoices and receipts to retailers and consumers, or even menus or price lists showing the goods offered for sale to support the claim the goods had been sold in restaurants were submitted in lieu of their claim, as the procurement of evidence of this nature would not have been difficult considering the nature of business the opposition involved in.
Further, the Hearing officer also conceded to the fact that the five invoices, indicating the prospective sale of goods in the UK provided as evidence to support the contention of genuine use of the mark in the UK.[2] However, this very submission of China Resources, pointing towards genuine use in the UK could not satisfy the Hearing Officer with regard to the trademark registrations over SNOW with the European Union, and hence were done away with during further stages of examination
Decision
The decision was made by the Hearing officer on the basis of registrations for marks on the same line as the one applied for in the present case, and the same was considered to be the best case of the opponents.
In the present case, both the marks in dispute were registered in relation to beer, and there was a similarity that the Hearing Officer could make out between the goods in dispute and deemed them to be very alike, thus dismissing the submission of the Applicants that beer was not similar to ale, lager, stout and porter, to also cover which the application for the mark was filed. Further, there was a visual and phonetic similarity between the marks that could be observed due to the use of the earlier mark SNOW before the mark applied for. Though there existed an inherent conceptual difference when considered, i.e. SNOW GLOBE had a meaning different from SNOW, the similarity that struck the Hearing Officer was that both the marks refer to something ‘wintery’.
Everything was going in favour of China Resources till here, but the Hearing Officer, after this point seemed to turn towards Asahi when it was discovered that no possibility of confusion arose despite the existing similarity in the goods as well as their marks, owing to the fact that no independent or peculiar character was retained by SNOW within SNOW GLOBE, the mark applied for.[3] Also, if considered as a whole, SNOW GLOBE imparted a different meaning to components when taken separately. In short, on interpretation of the meaning of SNOW GLOBE, the Hearing Officer found that its meaning was of such nature that it overcame the similarities of the marks for both non-identical as well as identical goods.
Though the conclusion may
appear incorrect initially, its examination reveals that an issue which
involves dispute over trademarks it is important to understand that every such
dispute cannot be resolved on finding mere similarity of marks and goods.
[1] External Author (Anonymous), UKIPO allows Asahi ‘snow’ beer TM despite Chinese brewery opposition, available at: http://brianconroy.com/2019/08/12/external-article-ukipo-allows-asahi-snow-beer-tm-despite-chinese-brewery-opposition/
[2] Bridget Diakun, Asahi’s Acquisition of Fuller’s show value of brands in overseas expansion, available at: https://www.worldtrademarkreview.com/brand-management/asahis-acquisition-fullers-shows-value-brands-overseas-expansion
[3] AA Thornton, Asahi Holdings UK Limited successfully defends mark SNOW GLOBE, available at: https://www.lexology.com/library/detail.aspx?g=f0567bfe-44e2-4b53-bd33-05f86e54dd1c (August 27, 2019)
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