LUCKY TEA - a storm in a teacup

MF filed for the UK trade mark LUCKY TEA in June 2013 for classes 21 and 30, covering tea-related kitchen utensils and tea-based beverages but also non-tea based beverages and various food items.

TWG filed opposition on three grounds:

1. that TWG owned earlier unregistered rights in LUCKY TEA, LUCKY ME TEA and LUCKY YOU TEA;
2. that MF had no intention to use the mark on all goods applied for (for example those unrelated to tea) such that it had been applied for in bad faith; and
3. that the mark was deceptive for goods unrelated to tea.

In August 2013, TWG filed to register two figurative marks for LUCKY TEA as a series (one in colour and one in black and white), covering classes 21 and 30 for identical and similar goods to those of MF's mark. MF filed opposition on the basis of its earlier LUCKY TEA right as applied for and its unregistered rights in LUCKY NUMBER TEA, LUCKY and LUCKY STAR.

The two oppositions were dealt with in a consolidated hearing.

TWG opposition

The UK IPO considered that the relevant date for assessing goodwill of LUCKY TEA, LUCKY ME TEA and LUCKY YOU TEA was the date of MF's application in June 2013, but that earlier use of MF's unregistered rights in 2006 and 2007 could be taken into account. However whilst TWG started using its signs as early as 2010, it was unable to demonstrate that it had acquired the requisite goodwill in the UK by this date.

For bad faith, the burden of proof is initially on the opponent. TWG raised compelling prima facie evidence that MF did not have an intention to use the mark across all goods applied for, as the sign is indicative of a type of tea but not all goods relate to tea. TWG's bad faith claim did not extend to tea or tea-based beverages. MF's arguments that, for example, coffee may be promoted by saying it originates "from the makers of Lucky Tea" and that all goods in a tea room can be co-branded, were not accepted as the former was not trade mark use in respect of coffee and did not substantiate any intention to use the mark for the full range of goods; and the latter would be deceptive to the public. The Hearing Officer thus found the bad faith claim partially successful as MF did not evidence an intention to use on non-tea-based goods such as coffee, confectionery and cakes. There was however no bad faith for the class 21 goods or for non medical infusions and related goods.

Regarding the deception claim, the Hearing Officer held it was clear that use of TEA in relation to goods other than tea such as coffee or cocoa would result in real consumer deception and consumers would not view LUCKY TEA where applied to non-tea products as a brand extension. Notably the scope of this objection did not extend to goods such as confectionery and cakes which may be flavoured with tea, such that the deception claim did not advance TWG's case.

MF's application was allowed to proceed for class 21 and for a restricted set of goods in class 30, namely "tea, tea-based beverages; non medical infusions; dried plants and flavourings, and mixtures of the aforesaid goods, for preparing non-medicinal beverages".

MF opposition

The likelihood of confusion was assessed on the basis of MF's reduced specification and primarily on the basis of the black and white figurative mark. The goods in class 21 were considered identical, as were some goods in class 30 such as tea. Coffee was considered highly similar to tea and foodstuffs such as chocolates and frozen yoghurt were considered dissimilar.

LUCKY TEA was deemed the dominant element in TWG's figurative marks, with the TWG sign and fan devices also playing distinctive roles. The marks were considered to be:

• visually similar to a medium degree in light of the words LUCKY TEA featuring dominantly in TWG's mark and the fact that the same two words comprise MF's mark without embellishment;
• aurally identical, or if the TWG sign is spoken, highly similar; and
• conceptually very similar even taking into account the fans in TWG's marks.

The UKIPO considered the greater conceptual similarity to offset the medium level of visual similarity and that whilst consumers are unlikely to experience direct confusion as a result of the visual differences, the dominance of LUCKY TEA could lead to a likelihood of indirect confusion in respect of goods in class 21 and beverages in class 30, including tea and coffee. There was however no likelihood of confusion for the remaining goods in class 30 which had been held dissimilar.

Whilst MF failed to demonstrate sufficient goodwill in the UK with respect to the remaining goods in class 30, MF had achieved measurable success in respect of the goods materially important to both parties.

In short

This decision highlights the interaction between the scopes of absolute and relative ground claims in linked oppositions and the importance of filing relevant and sufficient evidence. Where parties are unable to prove earlier unregistered rights, having the first-filed mark will be an advantage. Even where a party is successful in reducing the scope of the first-filed mark for example via a bad faith claim, the first filer may expand the scope of protection again by claiming a likelihood of confusion (including indirect confusion) against both identical and similar goods.

Case details at a glance

Jurisdiction: United Kingdom
Decision level: UKIPO
Parties: Mariage Frères, Société anonyme v TWG Tea Company PTE Ltd
Citation: O-602-16
Date: 20 December 2016
Full decision: https://www.ipo.gov.uk/t-challenge-decision-results/o60216.pdf