Have you ever been out and considered the wine list, ordered a drink in a bar or restaurant or bought a drink in a shop and thought: ‘I wonder if there is a trade mark infringement issue here?’ The EU General Court had to do just that in a recent case between Anton Riemerschmid Weinbrennerei und Likörfabrik (“Anton Riemerschmid”) and Viña y Bodega Botalcura (“Viña y Bodega”) and possible likelihood of confusion.
In 2014, Anton Riemerschmid opposed Viña y Bodega’s application to register ‘LITU’ as an EU trade mark for ‘wines from Chile’, due to its earlier EU trade mark for ‘PITU’ for various goods including ‘alcoholic beverages’. In February 2016, the EU Board of Appeal held that there was not a likelihood of confusion between ‘LITU’ and ‘PITU’, so Anton Riemerschmid appealed to the EU General Court.
The EU General Court
One of the grounds that can prevent an EU trade mark from being registered is where it is identical or similar to an earlier trade mark (i.e. ‘LITU’ being similar to ‘PITU’) and the goods that the trade mark is registered for (i.e.’ wines from Chile’ and ‘alcoholic beverages’) are identical or similar so there is a likelihood of confusion by the public where the earlier trade mark is registered (in this case, in the EU). To determine whether a trade mark is similar, the Court looks at the visual (what it looks like), phonetic (what it sounds like) and conceptual (what it means) similarities. In its appeal, Anton Riemerschmid argued that there was a high degree of similarity visually and phonetically.
The EU General Court held that the marks were only visually similar to a certain degree, as the letters ‘p’ and ‘l’ are very different and the marks were short (only four letters) so this would overcome the fact that the marks were both made up of the letters ‘i’, ‘t’ and ‘u’. Likewise, the signs were phonetically similar only to a certain degree as the beginning of the marks (the ‘p’ and the ‘l’) were very different. For the visual and phonetic assessments, the Court noted that the beginning of a mark is more likely to be observed by the public. Even though the goods could be ordered in noisy places (e.g. bars and restaurants), this did not mean that the phonetic similarity should have more weight, as consumers use wine lists in bars and restaurants and only then order verbally. Furthermore, alcohol is often bought from self-service shops meaning that consumers select their drink by mainly relying on the images on the drink. The Court could not make a conceptual assessment as there was no particular meaning of the marks, but from the visual and phonetic assessment it concluded that there was no likelihood of confusion.
On the face of it, you would think that applying to register a trade mark for such a similar name to another alcoholic drink would be an issue. However, the fact that the marks were very short and the public would focus more on the start of the words was an important factor. This does not mean that having a mark that is short and changing one letter will be sufficient to register a similar trade mark, as each case will be assessed on its facts. In this case, the way that alcoholic drinks are purchased really impacted the visual and phonetic assessment.
Briffa advises on contentious and non-contentious trade mark matters and assists its clients with trade mark applications, opposition proceedings, cancellation proceedings and infringement disputes in various jurisdictions around the world through its network of international agents. If you have any queries or concerns regarding your trade mark portfolio or brand management generally, or if you would just like some general advice, please do not hesitate to contact us.