Assessment of Likelihood of Confusion Not Dependent on Marketing Intentions

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Published in “WTR Daily”, June 2013

In Masottina SpA v Office for Harmonisation in the Internal Market (OHIM) (Case T-393/11, May 14 2013), the General Court has confirmed the decision of the First Board of Appeal of OHIM (Case R 518/2010-1) in opposition proceedings between Masottina SpA and Bodegas Cooperativas de Alicante Coop V.

Masottina filed an application for the registration of the word sign CA’MARINA for “alcoholic beverages, in particular wine, sparkling wine, spirits, liqueurs” in Class 33 of the Nice Classification. Bodegas Cooperativas filed an opposition based on its earlier Community word mark MARINA ALTA, registered for “alcoholic beverages (except beers)” in Class 33.

The Opposition Division of OHIM upheld the opposition and the First Board of Appeal rejected the appeal filed by the applicant on the grounds that the goods were identical and that the similarities between the marks outweighed their dissimilarities. In particular, the board found, among other things, that consumers who have been exposed to wines, among other beverages, sold under the earlier mark MARINA ALTA and who are offered wines, among other beverages, under the mark CA’MARINA would believe that CA’MARINA is in fact a new line of wines developed by the proprietor of the earlier mark, or that there is a commercial connection between the parties.

On appeal, the General Court found that the marks CA’MARINA and MARINA ALTA have a high degree of visual, phonetic and conceptual similarity due to:

  • the presence in both marks of the word ‘marina’; and
  • the fact that the other elements did not reduce this similarity significantly.

Thus, the court considered that the terms ‘alta’ and ‘ca’ could not be viewed as dominant in such a way as to limit the assessment of the similarity between the signs at issue to only those two terms.

Contrary to the applicant’s argument that the term ‘marina’ does not have distinctive character because it is of common use and that it appears in a large number of Community trademarks (including marks registered for goods in Class 33), the court found that the fact that a mark has been registered means that the mark has a minimum degree of inherent distinctiveness. Therefore, the registration of the earlier mark signified that that mark has a minimum degree of distinctiveness. All the evidence furnished by the applicant in support of its claim that the term ‘marina’ is devoid of distinctive character was thus found inadmissible. In addition, the court found that the term ‘marina’ is not in any way descriptive of the goods at issue and that it has a certain distinctive character in relation to these goods.

The applicant also argued that the goods were different, as the mark applied for relates to high-quality goods, with the result that the consumer will turn to a specialised distribution channel in which the goods are selected and where consumers will receive assistance from experts. This argument was rejected, since registration was sought not only for wines, irrespective of their quality, but also for sparkling wines, spirits and liqueurs.

The court further underlined that, since particular marketing strategies for goods covered by the marks can vary over time and depend on the wishes of the proprietors of those marks, the prospective assessment of the likelihood of confusion between two marks cannot be dependent on marketing intentions, whether given effect or not, which are by their nature subjective for the proprietors of the marks. Thus, the use that the applicant intends to make of the mark applied for is irrelevant in that respect. The court also noted that, in the context of opposition proceedings, OHIM may take into account only the list of goods as it appears in
the trademark application.

Furthermore, the court found that the fact that the applicant wishes to use its mark only for high-quality alcoholic beverages of a certain price and possibly to distribute its goods via a specific distribution channel was irrelevant for the purposes of assessing the likelihood of confusion, since the goods can be perceived as designating product lines from the same producer.

Based on the abovementioned reasons, the court dismissed the action in its entirety, considering that the board had sufficiently analysed the earlier mark and that, therefore, Article 8(1)(b) of the Community Trademark Regulation (207/2009) had not been infringed. There was no need to give a ruling on the admissibility of the applicant’s request for the annulment of the Opposition Division’s decision and for registration of the mark applied for as a Community trademark.

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