Something To Wine About

• Published date: 19 July 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Dehns
• Author: Mr Joseph Letang and Daniel Wheatley

[2022] EWHC 620 (Ch), Wineapp Ltd v Johnson, High Court, 21st March 2022

Key points

• If part or all of a trade mark consists of descriptive words in the context of the relevant goods or services, it will be extremely difficult to enforce such a mark in reliance on those words
• Goodwill can be found after a relatively short period of use and as a result of use in a limited locality
• Compiling quality evidence to support your argument is vital

The High Court has recently dismissed an appeal by Wineapp Ltd following a failed opposition at the UK IPO, which sought to prevent a mark's registration under s5(4)(a) of the Trade Marks Act 1994 on the grounds of passing off.

The case serves as a warning against claiming rights in descriptive terms.

Mr Johnson (the Applicant) applied to register the trade mark "winesapp" plus device (shown below) in the UK on 26th September 2019 for "sommelier services" in class 43.

Wineapp Ltd (the Opponent) filed an opposition to this application in December 2019, claiming that its unregistered sign ("wineapp" plus device, also shown below) had been used since November 2018 throughout the UK.

Opposition background

Before the UK IPO, the Opponent submitted witness statements and exhibits as evidence that its unregistered trade mark possessed sufficient goodwill to suggest passing off on the part of the Applicant.

The Opponent claimed that its mark had been used since November 2018, specifying further that such use was in relation to "wines, live sommelier chat, wine selection, wine advisory services, wine algorithmic recommendations, wine consumer/community reviews and wine delivery services, all via an app".

The Opponent referred to turnover of '1.9m since the start of the mark's use, advertising expenditure of '302,000, and approximately 160,000 app downloads on iOS and Android devices up to July 2020.

The Opponent's evidence included, but was not limited to, copies of confirmation emails sent to customers bearing the Opponent's mark; screenshots from the Opponent's social media platforms showing use of the mark; and features and reviews from a few media outlets and websites.

The evidence showed that the Opponent's main business was wine, including by the bottle, for speedy home delivery in London.

Notably, there was no consumer evidence suggesting that actual and potential customers might associate the Opponent's business with the Applicant's mark.

The Applicant filed a witness statement and a single exhibit, and claimed that the...