Little evidence for Little Owl: How the UKIPO’s high evidential burden undermined the Blue Owl opposition

The UK Intellectual Property Office (UKIPO) recently issued its decision in the opposition against Artisan Group of Brands Limited’s ("ArtiSan Group") application to register the mark LITTLE OWL for wines in Class 33. The application faced opposition from Dauphin Entwicklungs-und Beteiligungs GmbH ("Dauphin") on the basis of their UK trade mark registration for BLUE OWL also covering class 33 for wines.  

The opposition was based on Sections 5(2)(b) (likelihood of confusion) and 5(3) (reputation and unfair advantage) of the Trade Marks Act 1994. Ultimately, the UKIPO rejected the opposition in its entirety, allowing LITTLE OWL to proceed to registration. The case illustrates the high evidential burden placed on opponents relying on earlier rights, especially where proof of use and reputation are in issue.

Proof of use: the central issue

Because the earlier BLUE OWL mark had been registered for more than five years, Dauphin were required to provide proof that their trade mark had been put to genuine use during the relevant period (15 November 2019 – 14 November 2024). The hearing officer criticised the evidence filed by Dauphin on the basis that the invoices filed showed extremely limited sales volumes, the invoices provided had redacted prices meaning calculation of turnover was not possible and no UK consumer-facing marketing evidence was provided.

The hearing officer concluded that the evidence was insufficient to demonstrate genuine use of the BLUE OWL mark. Interestingly, in case this conclusion was incorrect, the hearing officer proceeded to assess the merits of the opposition as if use had been proven.

Section 5(2)b) – likelihood of confusion

The hearing officer concluded the marks were visually, aurally and conceptually similar to a medium degree.

The hearing officer rejected any argument that "OWL" alone was dominant and concluded that the adjectives “BLUE” and “LITTLE” contribute equally and significantly to the overall impression as neither is negligible nor descriptive of wine. Although the goods covered by both marks were identical (all wines), the hearing officer found against both a likelihood of direct and indirect confusion.

Direct confusion

Direct confusion occurs when consumers would mistake one mark for the other.

Noting that the beginning of the marks tend to make more of an impact than the ends and the average consumer would have a medium degree of attention when purchasing wine goods, the hearing officer considered that the average consumer would not misremember the words "BLUE" or "LITTLE". Therefore, no likelihood of direct confusion was found.

Indirect confusion

Indirect confusion occurs when consumers recognise marks are different but sees something in common with it which implies an economic connection or brand extension.

The hearing officer very helpfully provides a clear analysis of the application of indirect confusion in this decision. The hearing officer applies the categories set out in L.A. Sugar Ltd v By Back Beat Inc (BL O/375/10), summarising three typical scenarios:

• Category (a): The common element is so strikingly distinctive that no one else would reasonably use it for example, invented words, highly unusual names or arbitrary combinations.

In this case, the hearing officer considered that "OWL was an ordinary dictionary word which has a recognisable meaning to the average consumer. Therefore, in addition to a finding that the mark was inherently distinctive to a medium degree with no enhanced distinctiveness, category (a) is not satisfied.

• Category (b): The later mark adds a non-distinctive prefix or suffix to the earlier mark — typical of sub-brands or variations.

In order for this category to be satisfied, the opponent's mark as a whole would need to be reproduced with an addition of a non-distinctive element. As this is not the case, this category is also not satisfied.

• Category (c): The later mark substitutes one element of a multi-element earlier mark in a way that appears logical and consistent with brand extension.

In this case, the word "OWL" in both marks are preceded with either the words "BLUE" or "LITTLE" and the hearing office did not consider that changing the words "BLUE " to "Little", or vice versa, was not logical nor consistent with a brand extension. Whilst the words are both used to describe the "owl", they are different types of descriptors; one describes colour whilst the other describes size. Therefore, this category is also not satisfied.

Section 5(3) – reputation and unfair advantage

A reputation requires that a significant part of the relevant public knows the earlier mark. The UKIPO reviewed the evidence filed by Dauphin and concluded that no reputation was established in the UK. Without reputation, the section 5(3) claim failed automatically.

The opposition was dismissed entirely and the application for LITTLE OWL was permitted proceed to registration.

Key Takeaways

• Proof of use demands credible, market‑reflective evidence: The decision reinforces that low-volume sales, limited marketing activity and redacted financial information will rarely meet the threshold of genuine use.

• Conceptual similarity alone doesn’t establish confusion: Even sharing a distinctive noun (“Owl”) was not enough where the adjectives created clear conceptual differences.

• Reputation is difficult to prove: The UKIPO continues to require clear, robust, geographically relevant evidence of market penetration.