IP Update: Tullamore Dew In Low Spirits As Opposition To The Registration Of Lynch's Tullamore Brew Is Dismissed

Author:Mr Gerard Kelly and Richard Woulfe
Profession:Mason Hayes & Curran
 
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On 18 August 2015, the Controller of Patents, Design and Trade Marks (the "Controller") handed down his decision to allow the registration of the trade marks "Lynch's Tullamore Brew" and "Lynchs Tullamore Brew". The application for registration, which was initially lodged in April 2012, was met with opposition from William Grant & Sons Irish Brands Limited ("William Grant"), the proprietor of the Irish trade mark Tullamore DEW, a well-known Irish whiskey brand first distilled in Tullamore in 1829.

The applicant, Mr Emmet Lynch, is a publican operating "Hugh Lynch's" public house in Tullamore. Mr Lynch deposed that the concept for the trade mark was born out of his interest in micro-brewing and, in an attempt to diversify his business; it was his intention to produce his own beer in the coming years. The application was made under Class 32 of the Nice Classification which includes beer, stout, ale and lager. No application was made to register the mark in Class 33 for whiskey. Interestingly, an application was also initially made by Mr Lynch for the registration of the mark Tullamore Brew but was subsequently withdrawn.

William Grant opposed the registration of the mark on three grounds which were individually addressed by the Controller as follows:

a) Likelihood of confusion on the part of the public, and likelihood of association with the Tullamore DEW mark.

The respective goods, i.e. beer and whiskey, were considered to be similar but not complimentary or identical. From a practical perspective, it was noted that they are created using different methods of production and relate to different classes of the Nice Classification. From the consumers' point of view it was held that the consumers at issue are adults who have distinct preferences when it comes to alcohol and "if someone's favourite beer was unavailable in a bar, restaurant or off-licence it is highly unlikely that they would select a whiskey instead."

When assessing the potential similarity between the marks, the Controller found that "Brew" and "Tullamore" were not the most distinctive elements of the mark and were merely a reference to the goods and the location of where the brewing is carried out respectively. It was acknowledged that the use of family names as a brand is common in brewing and that in this instance the word "Lynch's" dominated the mark. In these circumstances, the Controller held "undoubtedly in my opinion, sufficient distance is put between the respective...

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