Jul 12, 2018

EU General Court rejects wine appeal

Enoitalia Spa ("ES"), an Italian wine company, has had its appeal rejected by the EU General Court. The court confirmed the EUIPO were right to invalidate the trademark 'Antonio Rubini' as it caused a likelihood of confusion with an earlier registered mark.

In 2010, ES registered its mark in class 33 for alcoholic beverages, and it was subsequently registered in January 2013. However, later that year Spanish wine company La Rural Vinedos y Bodegas ("LRVB") applied to invalidate the mark. LRVB own a figurative mark, also registered in class 33, for the word 'Rutini'.

The decision to invalidate was upheld in 2015 by the Cancellation Division of the EUIPO, which stated that the mark would cause a likelihood of confusion with the earlier mark. The Cancellation Division explained that the goods covered by the marks are identical as well as the marks being phonetically, visually and conceptually similar.

ES's 2015 appeal against the first instance decision  was dismissed by the Fifth Board of Appeal. In that decision the board discussed the dominant elements of the marks, namely that the dominant element of ES's mark 'Rubini' is almost identical to the single word 'Rutini' in the earlier mark. It concluded that  there is significant risk that consumers may believe the products may have the same commercial origin.

In asking the General Court to annul the Appeal Board's decision, ES argued that the average consumer pays relatively high attention to bottle labels when choosing wines.

However, the General Court upheld the Appeal Board's judgment on the marks' dominant elements. The court said 'Antonio' is a common forename but 'Rubini' is "not common in the entirety of the relevant territory", so the latter word has higher level of distinctiveness than the former. Furthermore, the Court found that the marks are not conceptually similar, as determined by the board, but it upheld the findings of visual and phonetic similarity and an overall likelihood of confusion between the marks.

The court dismissed the appeal and ordered ES to pay the costs associated with the unsuccessful appeal.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.



in: EU/International, Trade Marks

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