Legal Updates

Intellectual Property: Community Trade Marks and Likelihood of Confusion

In the case of Shaker di L Laudato & C Sas -v- Office for Harmonisation in the Internal Market (OHIM), the Applicant filed an application for a Community Trade Mark (CTM) for a figurative sign, in respect of goods in classes 29 (meat, preserved fruit and vegetables, eggs and milk products, edible oils and fats), 32 (beers, and other non-alcoholic drinks) and 33 (alcoholic beverages excluding. beer). The mark consisted of the word LIMONCELLO written in large white letters along with other components set against a dark blue background.

The mark was examined and published by OHIM for opposition purposes1. The owner of the mark LIMONCHELO filed a notice of opposition against registration of LIMONCELLO on the basis of the likelihood of confusion, with the opponent's mark LIMONCHELO which was registered in Spain in class 33 in respect of alcoholic beverages2. The opposition was upheld by OHIM. It should be noted that OHIM does not examine trade mark applications on the basis of earlier marks. The applicant appealed against the decision on the grounds that no confusion would exist in the eyes of the public, as the marks consisted of differing components, were not visually the same and did not cover all the same classes.

OHIM's Board of Appeal dismissed the Applicant's appeal claiming that:

• the mark in question and the earlier mark covered the same goods;
• the main element of the Applicant's mark was the word LIMONCELLO; and
• the two marks were "visually and phonetically" very similar, and as a result there was a likelihood of confusion between the two marks.

As a result of the Board of Appeal's decision, the Applicant applied to the Court of First Instance (of the European Communities) (the "CFI") for annulment, seeking either that the decision be annulled, or altered to allow his application for registration to be granted. The CFI ruled as follows:

• A likelihood of confusion resulted from the inherent risk that the public might think that the goods in question came from the same undertaking, or undertakings that were economically linked. The likelihood of confusion had to be assessed globally by considering the perception of the marks and goods in question amongst the relevant public. As in this case, where the later mark was a complex mark which was visual in nature, an assessment of the overall impression that the mark created and whether any element of the mark was a 'dominant element', had to be based on visual analysis of the mark.
• Because the word, which formed the basis of the opposition, only covered 1/3 of the visual mark, whilst other components of the mark covered 2/3 of the visual mark, the latter had to be deemed the dominant element - as opposed to the word LIMONCELLO.
• The former element of the mark clearly had nothing in common with the opponent's mark, which was purely a word mark.
• There was therefore not enough similarity between the marks in question to rule that this might lead the Spanish public to believe that the goods in question came from the same (or an economically linked) undertaking. Consequently, there was no likelihood of confusion and therefore the decision of OHIM's Board of Appeal would be annulled and altered so that the opposition would be rejected.

Comment: RT Coopers can assist in filing of Community trade mark applications or represent your organisation in opposing proceedings.

If you require further information contact us.

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© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.