Success before the Appointed Person for Iceland Spring’s water brand trade marks

Iceland Foods appealed to the Appointed Person to review the trade mark opposition decision based on likelihood of confusion and Taryn assisted Iceland Spring as the respondent.

 

BLO-897-21, 2 December 2021, Appeal to the Appointed Person from the Decision of Mr Andrew Feldon (BL O/275/21) DATED 16th April 2021

 

The Appointed Person confirmed that there is no likelihood of confusion between our client’s ICELAND LAVA marks and the supermarket’s ICELAND mark.  In a further blow for Iceland Foods Limited, the decision confirms that it is reasonable to assume that the ICELAND name is capable of designating the geographical origin of natural spring water and mineral and carbonated waters in the future, even without proof of a repute for these goods.

 

Appealing to the Appointed Person

Decisions by the UKIPO in trade mark cases can be appealed to the Appointed Person or to the court. The Appointed Person is a senior lawyer who is an expert in IP law and their decision is final, in contrast to the court where decisions can be appealed further.

 

The appeal route to the Appointed Person is inexpensive (compared with court proceedings) and the standard of decisions is high. However, historically most appeals to the Appointed Person fail because it is uncommon for the UKIPO to make mistakes in the first instance decision.

 

This is the second success before the Appointed Person of  trade mark attorney Taryn Byrne – after she succeeded for Huber’s swimwear in a case against Solomon and Silver Limited.

 

Background to this trade mark case

Iceland Spring EHF (“ISE”) filed three applications for ICELAND LAVA marks (3231483 ICELAND LAVA, 3231488 ICELAND LAVA stylized and 3231488 ICELAND LAVE NATURAL SPRING WATER logo) for “mineral waters and other non-alcoholic beverages, namely natural spring water”.

 

The opponent, Iceland Foods Limited (“IFL”) opposed the applications based on various grounds, and these oppositions failed.

 

The decision regarding the likelihood of confusion grounds was appealed, with a focus on EUTM No. 673373 for the ICELAND word mark which Iceland Foods admitted was its best case.

 

Facts

IFL appealed on various grounds.

 

A reputation for natural spring water - The Appointed Person considered the appeal grounds starting with the Hearing Officer’s finding that Iceland has a reputation for natural spring water based on the evidence filed by the ISE. After reviewing the evidence, the Appointed Person agreed with IFL that the Hearing Officer was wrong in his findings of fact. There was not sufficient detail of sales volumes nor market share nor any evidence about the perception or knowledge of the average consumer in the UK as regards Iceland as a source of, or having a repute for, natural spring water.

 

Distinctiveness for non-alcoholic beverages - IFL’s ground of appeal based on the distinctiveness of the earlier marks for non-alcoholic beverages/notional and fair use was also upheld. It was held that the Hearing Officer had erred in finding that the ICELAND mark has low distinctive character for all non-alcoholic beverages other than natural spring water.

 

Having found for IFL, the Appointed Person then re-appraised the matter on the basis that ISE’s evidence does not establish that:

1. ICELAND, as a country name, has any association with natural spring water,
2. that Iceland has a reputation for its natural spring water, or
3. that Iceland would be seen as an indication of geographical origin.

 

Re-appraisal

In considering the overall impression of the ICELAND and the ICELAND LAVA mark, the Appointed Person holds that the word LAVA plays a greater role. The mark is more of a “LAVA” mark than an “ICELAND” mark. The Hearing Officer’s finding that the marks are visually similar to a medium degree and aurally similar to a medium degree are applied by the Appointed Person. 

In the conceptual assessment, the word ICELAND is held to be the name of a country, not a reference to IFL’s supermarket (as there is no evidence to prove enhanced distinctive character/repute for the goods at issue). The marks are held to be conceptually similar to a medium degree.

 

In assessing the distinctive character of IFL’s ICELAND mark, the Appointed Person finds that it is the name of a European country. The Appointed Person says that even though there is no evidence that the average consumer is aware of any reputation of Iceland for water, it is reasonable to assume the name is capable of designating the geographical origin of such goods in the future. He finds that ICELAND is weakly distinctive in relation to natural spring water and mineral and carbonated waters. ICELAND is held to have ordinary (or “medium”) distinctive character for goods which are described as “other non-alcoholic beverages; fruit drinks and fruit juices”.

 

In assessing the likelihood of confusion, the Hearing Officer’s finding of no direct confusion was unchallenged on appeal, so it is adopted.

 

In relation to indirect confusion, the Appointed Person says that the word ICELAND is subsumed in the ICELAND LAVA mark. He says the average consumer would not perceive the ICELAND LAVA mark as indicating a link to IFL because it contains the word ICELAND. ICELAND LAVA would not be considered to be a brand extension of ICELAND. Thus, there are no other reasons to justify a finding of indirect confusion.

 

On re-appraisal of the opposition, the Appointed Person says that there is no likelihood of confusion and the appeal fails.

 

Iceland Spring EHF was also awarded costs of £2150.

 

Standard of review

The above case is a good illustration of the difficulties of succeeding in an appeal before the Appointed Person.

 

Even though IFL’s grounds of appeal were upheld, the opposition decision was ultimately unchanged on appeal as the Appointed Person confirmed that there is no likelihood of confusion between ISE’S ICELAND LAVA marks and IFL’s ICELAND mark on reappraisal of the case.

 

The decision confirmed that it is reasonable to assume that the ICELAND name is capable of designating the geographical origin of natural spring water and mineral and carbonated waters in the future, even without proof of a repute for these goods.