In May 2019 Brewdog received a decision to the opposition of an application it had made to register a trade mark. The mark which was subject to opposition related to the expanding range of business goods and services. The case is of interest because of a number of issues that arose out of the evidence, the consideration of the complementarity of goods and services and the average consumer test. Lessons in brand protection can be learnt from the decision.
In October 2017 Brewdog plc (“Brewdog”) applied to register the trade mark BREWDOG DOGHOUSE in the UK in Class 40, Class 41 and Class 43 for a variety of services. The application was opposed by Doghouse Distillery Ltd (“Opponent”) which relied on an earlier mark. The earlier mark can be described as a black and white bulldog device above the word “DOGHOUSE” and is registered in Class 32, Class 33 and Class 43. It was argued by the Opponent that the respective goods and services were identical or similar and that the marks themselves were also similar.
The opposition was based upon section 5(2)(b) of the Trade Marks Act 1994 which sets out that:
(2) A trade mark shall not be registered if because
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion of the part of the public, which includes the likelihood of association with an earlier trade mark.
The Opponent stated that the mark actually being used by Brewdog is for the word only “DOGHOUSE” and as a result the two marks that were in question were closely similar (para 8).
Brewdog set out in evidence that it had used both DOGHOUSE and BREWDOG DOGHOUSE since October 2015 and that such use predated the opponent’s earlier mark. Evidence was produced by way of print outs from the website of an announcement of the arrival of a “Doghouse” in Glasgow. Print outs were also produced from the Brewdog’s Twitter account which used the description “DogHouse Merch City” and a TripAdvisor account which lists DogHouse Merchant City as a restaurant in Glasgow (para 11).
It is important for brands to note that this argument is irrelevant and Brewdog were informed of this fact. It was noted in the decision that defences based on the use of the trade mark under attack which precedes the date of use or registration of the attacker’s mark are rejected as wrong in law (Paras 16-17). Brewdog should not have advanced this line of defence. It should have applied to register DOGHOUSE at the time is considered it may use the word as part of its commercial operation in 2015. Registering the trade mark would have enabled Brewdog to oppose the registration of the Doghouse Distillery Ltd mark.
Another interesting point on this aspect of the defence was that relatively little evidence was produced from 2015 to show use of word “DOGHOUSE”. Other brands, in similar proceedings have been able to provide substantial evidence demonstrating use of a trade mark and the reputation associated with it. In a recent trade mark decision, Lego was able to demonstrate significant use of its logo, evidence of reputation and evidence of confusion during an opposition. It would not have assisted in this case, due to the fact that the mark was not registered prior to the opposing mark. However, it is worth noting that the ability for a brand to demonstrate the use of, and reputation associated with, a trade mark can have a significant impact on the success of a defence.
Another interesting point is the actual services for which the opposition was successful as the specifications are not the same. A number of items do not appear in the specification for Doghouse Distillery. The reason for this is the Complementarity of good or services (Paras 30-31). In the decision it was held that in class 43 that because it is not uncommon for hotel services and pub or restaurant services to be provided through same outlets. This is worth bearing in mind when drafting a specification or considering whether a mark will be opposed. Understanding the commercial reality with which the mark will be associated will provide an insight into whether a mark will be challenged.
Another consideration (and one on which neither party provided submissions) was how the average consumer selected the goods and services. It was held that visual considerations will dominate the selection process, but that there is an aural component to the purchase of the goods. In relation to the services, the visual component is also the dominant force, but due to word of mouth recommendations, there is still an aural component. This should not come as a surprise – the look of a can of beer or the outside of an establishment providing alcohol has a much greater impact than the name of either. The visual reality is the dominant aspect of the marks.
The similarity of the marks was also considered and the brief analysis of the word “Doghouse” is worth repeating in full. Wilson noted:
“I agree with the applicant that the word maybe seen as a reference to a kennel for a dog, but I also accept that the opponent’s submission that it may be seen as a reference to the saying “being in the doghouse”.
Visually, aurally and conceptually the marks were considered to be similar to a medium degree mainly due to the prominence of the word “Doghouse”.
Direct confusion was ruled out and indirect confusion was considered and the presence of the word “Doghouse” led to the finding that an average consumer would conclude that the parties’ marks indicate goods and services sold by the same or economically linked undertakings.
The opposition was successful in relation to a greater number of terms of the specification, importantly including (but not limited to): Class 43 – Services for providing food and drink; bar service; restaurant services; restaurant services incorporating licensed bar facilities; serving of alcoholic beverages. As a result, Brewdog may have to rethink its names for local hotels and bars.
We can only speculate on what may have caused a different outcome, particularly when only reviewing the decision. However it is worth questioning whether the provision of evidence on how the average consumer would purchase the goods and services at issue may have swayed proceedings in favour of Brewdog. If the average consumer selected the goods or services primarily through an online booking portal or through web searches using “Brewdog Doghouse”, might the decision be taken that an individual would be unlikely to search “Doghouse” and therefore there would have been a lower likelihood of confusion? The minor lesson here is that if you do not make a submission on a point then you lose the opportunity to win on it
The main lesson has to be to register trade marks you propose to use. BrewDog made the mistake in 2015 of not registering the trade mark. A registered trade mark is an incredibly valuable asset and when considering a new business venture a review of trade marks should be close to the top of the list.