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Corked! Trade Mark Application for ‘McBaileys’ Opposed

June 25, 2021, By

The makers of Bailey’s (the delicious Irish cream liqueur that goes down like water) have successfully opposed a trade mark application from Childrens Cancer Aid Limited (CCAL) for ‘McBaileys’.

R & Bailey & Co, a subsidiary of Diageo, filed an opposition to CCAL’s trade mark application on the grounds that consumers would assume there was a connection between Bailey’s and McBaileys.  On the contrary, McBaileys put forward the argument that their product was significantly different, as it contained a McVEGAN Scottish formula and was a clear Scottish alternative to the traditional Irish liqueur.

Typically, the most common grounds for opposing a trade mark application are:

  1. The trade mark and trade mark application are identical, providing identical goods & services;
  2. The trade mark and trade mark application are identical/similar, providing identical/similar goods and services AND causes a likelihood of confusion;
  3. The trade mark and trade mark application are identical/similar and provide different goods or services BUT the reputation of the third party (opposing the trade mark) is so great that the applicant’s use of the trade mark would provide an unfair advantage to them or be detrimental to the third party trade mark.
  4. There is an unregistered mark giving rise to a claim of passing off.

Bailey’s advanced arguments 2 & 3 and it would appear that Intellectual Property Office agreed with them.

This story highlights that while it is important to register a trade mark, you should look to be distinctive and avoid using a name that is confusingly similar or identical to other brands already out there.  There will of course be times when you think of a name, which you think doesn’t exist, and only become aware of it during the trade mark application process, in which case you may receive a Notice of Threatened Opposition (see here for more help on this:

We can help you at any stage of the trade mark application process, whether it be help with assessing the risks of your chosen name through a clearance search, opposing a trade mark application, or defending your trade mark application.  Just email us at [email protected] to book a free consultation meeting.

Written by Raj Girn, Solicitor