Reference to tea clippers only meaningful “in a historic sense”
Kallo is the owner of two figurative, stylised marks for CLIPPER and one word mark for the phrase CLIPPER NATURAL, FAIR AND DELICIOUS.
In 2021, Singaporean tea brand NAVA registered a number of international trade marks, and designated the UK, including for THE 1872 CLIPPER TEA CO.
Based on its earlier UK rights, Kallo launched opposition proceedings against NAVA’s marks.
In its analysis, the UKIPO’s hearing officer focused on the shared similarity of the ‘clipper’ element in the two brands. “The distinctive character of the mark lies in the words themselves,” the office stated, noting that the word ‘clipper’ was the most distinctive element of Kallo and NAVA’s marks.
The shared element originates from tea clippers, ships used in the 19th Century to transport tea to the UK from China and India.
NAVA initially argued that the inclusion of ‘CLIPPER’ in Kallo’s CLIPPER TEA marks was therefore “descriptive” of these ships, referencing online articles about tea clippers from the UK Tea and Infusions Association, the UK Loose Leaf Tea Company and Wikipedia.
The latter was not accepted as permissible evidence by the UKIPO since it’s “community-based” editing system leaves the information in its articles unverified.
Ultimately, the UKIPO decided that the average consumer would not immediately draw a connection between Clipper Tea and tea clipper ships.
While the UKIPO acknowledged that the word ‘clipper’ had some meaning relevant to the goods, it referred back to the articles cited by NAVA which stated that tea clippers were only used for two decades. It would therefore not be widespread knowledge to the point where consumers would immediately link the word ‘clipper’ to tea clippers.
“Although some individuals in the UK with an interest in this area of history may be aware of [tea clippers], I do not consider them to be sufficient enough in number so as to constitute a significant proportion of consumers,” the UKIPO decided.
The word ‘clipper’ is therefore “only… meaningful in a historic sense” even for consumers with knowledge of tea clipper ships, leaving an “indirect” connection between the present goods.
This led the UKIPO to decide that there was a risk of indirect confusion between the two brands, leading average consumers to believe that Kallo and NAVA’s brands were economically linked due to the shared ‘clipper’ element.
Subject to any appeal, then, the office decided that five of NAVA’s international registrations (1614293, 1613214, 1614625, 1613195 and 1613197) will be refused protection in the UK.
Concrete evidenced prior rights beat out “notions of heritage”
During the proceedings, NAVA provided evidence of its storied history and trading activity. However, the decision is a reminder that solid prior rights and evidence beat “notions of heritage almost every time” in UK proceedings, says Kilburn & Strode partner Carol Nyahasha.
“Brand owners should note that historic anecdotes, family stories or origin myths carry little weight unless they are converted into hard evidence of use, reputation and consumer perception in the relevant territory and time period,” Nyahasha advises.
The UKIPO’s approach to these proceedings were in line with “classic FMCG” cases, with the outcome reflecting that the relevant marks covered the same goods, shared a common distinctive element and that Kallo owned the rights to that distinctive element in the UK before NAVA.
“Against that backdrop, a rich backstory about 19th Century trading routs could not displace the fact that UK consumers already understand Kallo’s CLIPPER as a badge of origin for tea,” she says.
The case also exemplifies how a brand’s heritage can be “territorially fragile” as Nyahasha points out.
“A legacy that is powerful in Singapore does not automatically carry weight in the UK, and tribunals will not allow it to trump an existing distinctive element on the register,” she explains. “Heritage brand owners should therefore identify early which parts of their brand story are non-negotiable, and which elements can flex so that they are not betting the entire expansion strategy on being able to appropriate a core element that already belongs to someone else in that jurisdiction.”
A registered word mark could have provided Kallo a win “more easily”
During the lengthy series of proceedings, NAVA did have some success in its counterclaims against KALLO’s marks, with its applications to partially revoke two of KALLO’s marks based on non-use being successful.
Kallo’s lack of a registered word mark for CLIPPER TEA may have made their proceedings against NAVA “significantly more complicated”, according to Fieldfisher partner and head of IP Hastings Guise.
“[Kallo’s] earlier registration included the word CLIPPER in three mildly stylised forms. The tribunal found that there was no longer any genuine use for this stylisation,” says Guise. “Clipper Tea’s opposition therefore relied upon more recent registrations which included a more developed graphical lock-up together with a strapline.”
The UKIPO recognised the stylistic differences between Kallo and NAVA’s marks.
The presence of a sailing ship, a reference to 1872 and NAVA’s tagline “historical blend” were described by the office as giving the brand a “traditional, even historic, style and feel”. This is in direct contrast to Kallo’s marks, which instead take a “more modern” feel.
Nonetheless, the UKIPO ruled that the average consumer would still be likely to assume that there is an economic connection between the brands and perceive the stylistic differences as “a brand update or variant ‘CLIPPER’ brand”.
“If Kallo had maintained a word mark registration for CLIPPER, which would encompass notional use in any stylisation, it is likely that they would have achieved a much easier win on a likelihood of direct confusion,” Guise concludes.
‘Clipper Tea’s UKIPO proceedings a reminder that prior rights beat “notions of heritage”.’
This article was first published on WTR on 17 April 2026: ‘Clipper Tea’s UKIPO proceedings a reminder that prior rights beat “notions of heritage”.’ Republished with permission.
