General Court 'Pours' Over CTM Opposition of Registration Relating to the Wine Industry

In the recent decision in the case of Antica Azienda Agricola Vitivinicola Dei Conti Leone De Castris Srl v OHIM the General Court dismissed an appeal following a trade mark dispute between Italian and Spanish wine producers.

Background

In January 2012, the applicant, Italian wine producer Antica Azienda Agricola Vitivinicola Dei Conti Leone De Castris Srl ("Antica"), filed an application for registration of a Community trade mark ("CTM") with the Office for Harmonisation in the Internal Market ("OHIM").

The Nice class of goods in respect of which registration was sought was Class 33 which covers 'alcohlic beverages, except beers'. Antica also applied for a figurative sign 'Illiria', the name of a wine they produced.

On 11 May 2012, an opposition to the above application was filed by Spinish winre producer Vicente Gandía Pla, a Spanish wine producer. They opposed registration of the mark in respect of the goods referred to above. Their opposition was based on the earlier CTM 'Castillo De Liria', filed on 14 May 2009 (registered 1 December 2009) under CTM number: 8299653 for goods in Classes 32, 33 and 39.

Opposition Division

The Opposition Division rejected the opposition based on the fact that there was no likelihood of confusion between the two marks. Subsequent to this decision the Spanish opposer filed an appeal.

General Court

The Fourth Board of Appeal overruled the decision of the Opposition Division and this has been confirmed by the General Court.

It held that wines are the subject of widspread consumption and and distribution, from corner shops and supermarkets to restaurants and cafés. The relevant public is the average consumer of everyday consumer goods, like wines. These consumers are said to be well-informed and reasonably observant.

The signs in issue represented a low degree of visual similarity, as well as there being a medium degree of photenic similarity in that when both marks are recited they sound similar. The distinctive and dominant element of the earlier trade mark is the element 'Liria' and that the distintive and dominant feature of the mark applied for subsequently is the word element 'Illiria'.

Taking in consideration that the goods are identical between the marks in question, it is settled case-law that for wines a particular importance is attached to the phonetic aspect and that the element 'castillo de' featuring in the earlier mark belonging to the Spanish wine producer is a generic element and the figurative element of the mark applied for by Antica was not distintive. The General Court therefore felt that there was similarity between the signs 'Liria' and 'Illiria' and so it confirmed the Fourth Board of Appeal's decision that a likelihood of confusion existed.