The Titanic Gin Trademark Case
The UK IPO’s recent decision on the Titanic Gin trademark dispute underscores how goodwill and localised use can impact trademark protection. In Danny Boy Label LLP v Belfast Gin Distillery Ltd (O/315/20), the Hearing Officer (HO) examined whether a business that had largely ceased trading could still enforce its rights, highlighting the importance of goodwill retention in passing off claims.
Case Background
In August 2018, Belfast Gin Distillery Ltd (BGD) registered the trademark Titanic Gin in the UK, covering class 33 (spirits and liquors) and class 40 (spirits distillery services). However, Danny Boy Label LLP (DBL), a company with prior use of the name Titanic on whiskey products, challenged this registration. DBL’s action sought to invalidate the Titanic Gin trademark under Section 5(2)(b) and Section 5(4)(a) of the Trade Marks Act 1994.
DBL based its invalidity claim on two main grounds:
An earlier EU trademark for TITANIC (the Earlier Mark), registered for similar goods.
Use of the sign TITANIC in the UK since 2008 on whiskey products (the Earlier Sign).
Evidence of Goodwill
To support its claim, DBL submitted 17 invoices showing sales of Titanic whiskey from 2014 to 2017, which totaled around £15,000. The sales were primarily within Belfast, suggesting a limited but focused market presence. Despite the small scale, the HO accepted that DBL had built goodwill in the Titanic brand through consistent whiskey sales over nearly a decade, especially given the historic and iconic association of the name Titanic with Belfast.
Goodwill: Abandonment vs. Retention
A critical question in the case was whether DBL’s goodwill had been abandoned, as its whiskey sales ceased in 2011 due to a supplier closure, with only residual stock being sold thereafter. DBL argued that it retained its goodwill, citing efforts to resume whiskey production, including sourcing new bottle artwork and suppliers.
The HO concluded that DBL had not abandoned its goodwill. Despite low sales volumes in later years, DBL’s continued use of the Titanic name and active attempts to source new suppliers indicated that its business intentions had not ceased. The HO thus recognized that goodwill can persist beyond a temporary cessation of trade, particularly when efforts to continue trading or restart production are evident.
Passing Off and Likelihood of Confusion
Having established goodwill, the HO then examined the likelihood of confusion among consumers, a key element of passing off. The following findings were made:
Spirits and Liquors (Class 33):
The HO determined that consumers of DBL’s whiskey could reasonably assume Titanic Gin was a related product from the same source, given the similarity between whiskey and other spirits.Spirits Distillery Services (Class 40):
The HO also found that a connection could be made between distillery services and spirits production, creating the potential for consumer confusion.
Due to the potential for confusion, the HO ruled that DBL’s passing off claim succeeded, as a substantial number of consumers would likely be misled by the use of Titanic on gin and distillery services.
Trade Mark Use Requirement under Section 5(2)(b)
DBL also claimed invalidity under Section 5(2)(b), which prohibits registration of a similar mark if it could confuse consumers. However, DBL’s EU trade mark (Earlier Mark) was subject to the EU proof of use requirement. Under EU law, use of a trademark in just one member state can suffice to maintain the trademark’s validity across the EU. Nonetheless, the HO concluded that DBL’s limited sales (£15,000 over three years) were insufficient to demonstrate genuine use across the EU market for whiskey products. Consequently, the Section 5(2)(b) ground failed due to lack of sufficient trade mark use.
Key Takeaways from the Titanic Gin Case
This case highlights important points about trademark and passing off law:
Goodwill Retention:
The decision illustrates that goodwill does not necessarily vanish when a business temporarily halts trade. Goodwill may persist if there is evidence of intent to resume business or other actions that maintain the brand’s association with the product.Passing Off and Localised Goodwill:
Even with relatively small and localized sales, a business may succeed in a passing off claim if it can show goodwill and the potential for consumer confusion. For UK-based businesses, this underscores that small-scale, long-term use can establish protectable goodwill.Proof of Use for EU Trade Marks:
For businesses seeking to enforce EU trade marks in the UK, this case is a reminder that localised sales alone may not suffice to meet the proof of use requirement. Trademark owners should consider establishing broader EU market presence if they wish to maintain enforceable rights.
Conclusion
The Titanic Gin decision underscores the importance of goodwill retention, especially for small or local businesses that may face interruptions in trading. It also demonstrates the limits of EU trademark enforcement when trade mark use is restricted to one country or region. For UK businesses, the case reinforces the value of proving a consistent, localized presence to succeed in passing off claims.