BrewDog is a well-known independent Scottish craft brewer which produces high strength beers. However, the brand has also developed other widely recognised alcoholic products including its popular Lone Wolf gin. In 2016, BrewDog successfully registered the 'Lone Wolf' trade mark with the US Patent and Trademark office. In July 2022, Lone Wolf Cigar Cellar Inc ("LWCC") retrospectively challenged Brewdog's trade mark application after that brand decided to enter the drinks sector. LWCC's registered trademark currently does not include class 33 which covers alcoholic beverages. Nevertheless, LWCC claim that the use of the 'Lone Wolf' mark by BrewDog will cause damage to its future business ventures and that they wish to have Brewdog's trademark 'cancelled'.
Let's beGIN with trade marks- Why register one?
In the UK, the Trade Marks Act 1994 (the "1994 Act") protects trade mark owners from third parties using their marks without their consent, which prevents them from benefiting from the goodwill which the brand has developed. There are various advantages to registering a trade mark including:
1. Protection from commercial exploitation - brands invest considerable time and resources into developing their reputation in the market. Having a trade mark allows them to protect their sign from competitors taking advantage of it when selling their own products or services.
2. Protection and enforcement - having a registered trade mark gives brands the option to act swiftly and utilise enforcement mechanisms to prevent other businesses from selling copycat products/services; and
3. A deterrent to infringers - the fact that a brand has a registered IP right, such as a trade mark, can deter third parties from attempting to use an identical or similar sign in the first place.
What are the grounds for challenging a trade mark application in the UK?
LWCC's trade mark currently covers tobacco, smokers' articles and matches. We will need to wait for the decision of the US Patent and Trademarks Office to determine whether their challenge has been successful. However, in the meantime, it is useful to be aware of the various ways in which trade marks can be challenged in the UK.
It is possible to challenge a trade mark before it is even in use in the UK. Once a trade mark application has successfully passed the examination process of the UK Intellectual Property Office's (the "UK IPO"), it is published in the Trade Marks Journal. The trade mark can be challenged for a period of two months, although an opposing party has the option of requesting an extension of the opposition period by one month by filing a 'Notice of Threatened Opposition'.
The various grounds of opposition fall into two categories: absolute grounds and relative grounds. Absolute grounds are that the trade mark does not meet the legal requirements, for example, that it is descriptive and non-distinctive. Relative grounds are more subjective, for example, that the mark is confusingly similar to an existing trade mark. An opposition filed on the basis of absolute grounds can be filed by anyone. In contrast, an opposition filed on the basis of relative grounds must be filed by a party which already owns pre-existing relative rights.
In terms of the process thereafter, the applicant is entitled to file defences, and evidence is then submitted by both parties. The UK IPO can schedule a hearing and request written submissions, with a decision usually issued around two months later, which will determine whether the trade mark can be registered or not.
What are the grounds for challenging a trade mark after it is registered?
Once a trade mark is registered, a third party can apply to have it revoked. This can be done in two ways:
1. By obtaining a revocation of the mark under section 46 of the 1994 Act.
Revocation can be sought if:
(a) within 5 years of the date of registration the trade mark has not been put to genuine use in the UK, by the owner or with their consent, in relation to the goods/services for which it was registered and there are no proper reasons for its non-use;
(b) its use has been suspended for an uninterrupted period of 5 years for no proper reason;
(c) it has become the common name in the trade for the product or service for which it is registered; or
(d) it is liable to mislead the public.
2. By having the trade mark declared invalid under section 47 of the 1994 Act.
Various grounds apply here, including where the trade mark was registered in breach of section 3 of the 1994 act (which refers to the absolute grounds for refusal of registration), unless the trade mark has acquired a distinctive character in relation to the goods or services for which it is registered.
How to be top dog
It is crucial that businesses register their IP rights wherever possible, as part of having a robust brand protection strategy. It is also important for businesses to be aware of the branding being used by competitors, to identify ways of challenging competing signs and, if necessary, take action against infringing parties.
If you would like to speak to one of our experts about trade mark applications or infringement, or IP protection in general, please get in touch with a member of the IP, Technology & Data team or your usual contact at Brodies.