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 greater proportion of the Opponent’s sales were made following the filing of the application in September 2019.
The exhibit presented by the Applicant included a screenshot from the Wine and Spirits Trade Association website, showing that the UK wine market was valued at £10.6bn in 2018.
In the evidence in reply, the Opponent submitted a revision to the evidence that was previously given to include only business activity that took place in the 10 months prior to the relevant date, including revising the quoted turnover figure from £1.9m to just over £165,000 (around 30,000 bottles of wine) and the number of app downloads to around 33,000.