07/06/2024
On 20 February 2024, the UKIPO issued its decision in Case O/0131/24, an opposition by Big Drop Brewing Company Limited (‘Big Drop’) against an application for the trade mark DRY JANUARY by Alcohol Research UK. This is a case that highlights the dangers of coining an apt description for a new product or service and then using that description as your trade mark. It also demonstrates that evidence of use is not always enough to prove that a mark has acquired distinctiveness.
Many of us over-indulge at Christmas and resolve to make changes in the New Year. One of the more common resolutions is to cut back on alcohol. And thus the “Dry January” campaign was conceived!
The “Dry January” campaign was first delivered in the UK in 2013 by the charity Alcohol Concern, which later merged with Alcohol Research UK to become Alcohol Change UK. The campaign encouraged people to sign up to abstain entirely from alcohol for the month of January. Some 4,000 people signed up for the first campaign. In 2023, Alcohol Change UK celebrated its 10th year of the campaign with 175,000 signatories to the UK campaign. (Figures for January 2024 are not yet available.)
Since 2013, Alcohol Research UK has owned trade mark registrations of the mark below.
In 2014 it registered the word-mark DRY JANUARY under EUTM Registration No 012826863 in Classes 16, 25, 36 & 41, primarily for charity and educational services. Post-Brexit, protection under this word-mark was maintained in the UK under the “clone” derived from the EUTM registration.
On 29 October 2020, Alcohol Research UK filed UK Application No UK00003549988 for the word-mark DRY JANUARY for a wide range of goods and services. The application was accepted after the submission of evidence of acquired distinctiveness, but was then partially opposed by Big Drop Brewing Company Limited (‘Big Drop’) in respect of various types of non-alcoholic drinks and services connected with the marketing, sale and provision of food and drinks
There were multiple grounds of opposition, including that the sign lacks distinctiveness and is descriptive for the opposed goods and services, and that the sign has become generic since “dry January” is commonly used to describe abstaining from alcohol in January. BigDrop also opposed on the basis that the application was filed in bad faith, in that the Applicant had no intention to use the sign for the opposed goods and services.
In its defence, Alcohol Research UK stated that it had coined the sign “DRY JANUARY” and had invested significantly in its promotion for over a decade. It claimed that the sign “DRY JANUARY” had acquired distinctiveness through extensive use and was recognised by the public as synonymous with its campaign. It also claimed that it policed use of this sign and licensed it to others.
Both parties filed evidence.
Hearing Officer Judi Pike held that “DRY JANUARY” is not incapable of distinguishing any goods and services and thus can constitute a trade mark. However, she found that these words would be unlikely to be perceived as a trade mark for the contested goods and services, since they directly describe the widely recognised and practiced concept of abstaining from alcohol in January. In response to the claim by Alcohol Research that it had coined the term “DRY JANUARY”, she stated (at Para 47 of the decision):
“That no one else is using a term, or has not registered it, does not mean that a term is distinctive. When oven chips were first invented, nobody else had used the term because oven chips didn’t exist, but that did not mean that ‘oven chips’ was distinctive as a trade mark. It was not distinctive because it described the goods: it was the apt name for them. It does not need a great deal of analysis in the context of the goods and services which are at issue to arrive at an understanding of what DRY JANUARY means. It means going dry in January, dry being a common way of expressing abstinence from alcohol.”
Responding to the claim that Alcohol Research UK had policed use of the sign “DRY JANUARY”, the Hearing Officer commented (at Para 53):
“I note the applicant’s evidence that it pursued unauthorised use of its mark. … Pursuit of others using a term in a non-distinctive or descriptive way does not make a mark distinctive per se for the contested goods or services.”
In response to the claim by Alcohol Research UK that the sign had acquired distinctiveness through use, the Hearing Officer commented (at Para 72):
“The applicant has not provided any evidence of its use in relation to the contested goods and services such that it would have educated the average consumer to see DRY JANUARY as indicating the goods and services of one undertaking and distinguishing them from those of other undertakings at the relevant date. The use is also invariably with the cup device and/or with the applicant’s name which are the distinctive elements in use. For words which are lacking in distinctiveness and are descriptive, mere use does not prove distinctiveness.”
The Hearing Officer found “DRY JANUARY” to lack distinctiveness and to be descriptive in relation to all of the contested goods and services, and also found that by the date of application this term had become customary to use in relation to non-alcoholic drinks. The opposition therefore succeeded in full under S 3 (1) (b) and (c) and in part under S 3 (1) (d), although it failed under S 3 (1) (a), S 3 (6) and S 5 (4). Alcohol Research UK was ordered to pay to Big Drop costs amounting to £1850.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
