The recent case of Sunrider Corporation v VITASOY International Holdings Ltd , concerned an opposition to a trade mark registration. According to s.5(2) of the Trade Marks Act 1994:
“A trade mark shall not be registered if… it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, [and] there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark”.
In addition to this, Schedule 3 to the Trade Marks Rules 2000 provides that Class 32 includes:
“Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages [This class does not include beverages for medical purposes (which are in class 5) or milk beverages (which are in class 29)].”
The respondent in this case was the registered owner of a UK trade mark for the word ‘VITALITE’. The VITALITE mark was registered for a number of matters including herbal and nutritional supplements and foods. The applicant was a company from Hong Kong whose products included VITASOY: a line of nutritious soybean drinks, and its VITA dairy milk products, juice drinks, teas carbonated drinks and bottled water.
The applicant was the registered proprietor of a number of UK trade marks for the words VITA and VITASOY. The applicant applied for the registration of the defendant’s trade mark to be declared invalid under s.5(2) of the Trade Marks Act 1994 because the VITALITE mark was similar to VITASOY’s marks and was registered in respect of goods that were identical or similar to the goods covered by VITASOY’s marks to the extent that there existed a likelihood of confusion.
The application was partly dismissed by the hearing officer for the Registrar of Trade Marks (the “Hearing Officer”). The Hearing Officer held that there was no risk of confusion in relation to the VITALITE and VITASOY marks. However, he held that the position was different in relation to the VITA mark. He considered that the use of VITALITE by the respondent in respect of all goods contained in class 32 was likely to cause confusion.
In considering the defendant’s class 32 goods and the applicant’s class 32 goods, the Hearing Officer found that although the defendant’s goods were described as ‘herbal drinks’ they were not primarily herbal, but were a beverage proper to that class in that they included herbs as minor ingredients, and therefore were potentially similar goods to those of the applicant’s registration.
The respondent appealed the decision in respect of the class 32 goods.
The issue which had to be considered was whether any of the goods within the VITALITE class 32 specification were identical and/or similar to any of the goods within the VITA class 32 specification.
The appeal was allowed in part.
The findings in respect of the similarity of the goods were held to be wrong in part. ‘Herbal drinks’ within the VITALITE class 32 specification were not similar goods within the VITA class 32 specification. A beverage identified primarily as a carbonated and non-alcoholic drink made from (or including) sugar cane, guava and mango did not become a ‘herbal drink’ by having a herb added as a minor ingredient. On that basis, the nature of the herbal drink was different to that of the VITA drink.