case comment - ITMA

More documents

Recommendations

Info

CASE COMMENT CASE COMMENT Rioja regulators toast vinegar label decision Félix Muñoz Arraiza v OHIM (T-138/09), General Court, 9 June 2010. The General Court has upheld the Second Board of Appeal’s decision in relation to Félix Muñoz Arraiza’s appeal against the refusal to register RIOJAVINA on the basis of an earlier Community collective registration of the figurative mark RIOJA and numerous other figurative RIOJA registrations in the name of Consejo Regulador de la Denominación de Origen Calificada Rioja (CRD). Triona Desmond reports... In November 2004, Félix Muñoz Arraiza filed a CTM application for the word mark RIOJAVINA for ‘preserves, edible oils and fats from la Rioja’ in class 29, ‘vinegars, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, sauces (including salad dressings), spices, ice’ in class 30 and ‘sole agencies, representation services, wholesaling, retailing, export, import; all the aforesaid relating to preserves, oils, edible fats, vinegars, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, sauces (including salad dressings), spices and ice’ in class 35. CRD opposed the application on the basis of a likelihood of confusion under Article 8(1)(b), relying on a Community Collective registration for the mark illustrated here which covered wines. The opposition was also based on other figurative RIOJA marks, namely an International and numerous national registrations covering wines. The opposition was partially upheld for ‘vinegars’ in Class 30 and ‘sole agencies, representation services, wholesaling, retailing, export, import, all the aforesaid relating to vinegars,’ in Class 35. The Opposition Division rejected the opposition for the other goods and services covered in the trade mark application, because of lack of similarity between those goods and services and the goods covered by the earlier marks. The applicant appealed but the appeal was dismissed by the Second Board of Appeal. The Appeal Board concurred with the Opposition Division that there was a low degree of similarity between vinegars and wines, however this was offset by the high degree of similarity between the marks. This was also the case for the services covered by the application and wines. The applicant appealed again, requesting that the decision be annulled. The applicant argued that as the CRD was an administrative body, and more specifically a local agency of the Spanish Ministry of the Environment and Rural and Marine Affairs responsible for ensuring the quality of Rioja wines, and not a producer of Rioja wine, it was not an undertaking with which the applicant would compete. Secondly, the applicant argued that it was unlikely that a consumer would think that the applicant’s goods came from such an administrative body. Findings of the court Triona Desmond The court found that the precise commercial origin that the relevant public would attribute to the goods or services covered by each of the two marks at issue was of little importance so far as a likelihood of confusion 30 ITMA Review July/August 2010
etween them was concerned. It was by contrast important whether that commercial origin could be perceived by the relevant public as being the same in both cases. Comparison of the marks The court found that the Board of Appeal rightly held that the word element “RIOJA” covered both marks was the dominant element. In addition the court found that the RIOJA element of the mark attracted the attention of the relevant public by the position in both of the main earlier marks on which the opposition was based and by the reputation which was enjoyed within most of the European Union in connection with Rioja wines. Although there were other elements of one of the earlier marks it was considered that the word element RIOJA was the distinctive element. In addition, they found that there was a high degree of phonetic similarity between the marks at issue because of the common word element RIOJA. The element “VINA” of the mark applied for, situated at the end of the mark, was deemed less phonetically important. As to the four other elements of the earlier Community mark, “consego”, “regulador”, “denominacion origen” and “calificada”, these were located on four sides of the earlier mark, two of them positioned vertically and therefore difficult to read. As a result the court found them to be secondary within the mark. Furthermore the court considered that both marks RIOJA and RIOJAVINA had a high degree of conceptual similarity on their own. However this conceptual similarity was strengthened by the representation of a bunch of grapes and a vine leaf in the RIOJA figurative mark therefore strengthening for the relevant consumers the association with grapevine products and more importantly RIOJA wine. Comparison of the goods When comparing goods, the court found that the Board of Appeal was correct in concluding that there was a low degree of similarity between vinegar and wine. Nonetheless they found that even though vinegar, July/August 2010 CASE COMMENT unlike wine, was not a drink, both products could be used in food preparation. In addition vinegar is usually obtained by the fermentation of wine. The court found that the applicant did not establish that the Board of Appeal was wrong to find that the goods and services referred to in the trade mark application were similar, although only to a low degree, to the product covered by the earlier mark. Other factors Although the applicant was the proprietor of the Spanish registration for the RIOJAVINA mark and has marketed vinegars in Spain under that mark for over 50 years, this did not prove the absence of a likelihood of confusion on the part of Spanish consumers as to the commercial origin of the vinegar marketed under that product. Furthermore, the relevant public were European Union consumers and not the Spanish public alone. The applicant’s argument that the opposition proceedings brought by the CRD sought to monopolise use of the word RIOJA whether for vinegar and any other products and services, was dismissed by the court. Conclusion The court found that the Board of Appeal was correct to find the marks visually, phonetically and conceptually similar and the low degree of similarity between the goods and services was offset by the high degree of similarity between the marks. As a result the General Court upheld the decision of the Board of Appeal in relation to the likelihood of confusion. This case demonstrates that geographical registrations can be used to prevent other similar marks from being registered. It also gives solace to owners of Community Collective marks which can be successfully used to prevent the registration of similar later marks. I’ll happily raise my glass to that. Triona Desmond, Hammonds LLP, triona.desmond@hammonds.com “Although the applicant was the proprietor of the Spanish registration for the RIOJAVINA mark and has marketed vinegars in Spain under that mark for over 50 years, this did not prove the absence of a likelihood of confusion on the part of Spanish consumers as to the commercial origin of the vinegar marketed under that product. Furthermore, the relevant public were European Union consumers and not the Spanish public alone. ITMA Review 31
Page 1 and 2: The Journal of The Institute of Tra
Page 3 and 4: tribute groups in the UK alone and
Page 5 and 6: ITMA BUSINESS July/August 2010 ITMA
Page 7 and 8: complaints. The Legal Services Act
Page 9 and 10: practitioner whose spouse is a shar
Page 11 and 12: Lianne Bulger (Hammonds), Akosua Me
Page 13 and 14: CASE COMMENT Geoff Weller Summary T
Page 15 and 16: elied on at an earlier stage. This
Page 17 and 18: Andy Gilchrist Kureha applied for a
Page 19 and 20: of the elements of a mark is descri
Page 21 and 22: put against them and a proper oppor
Page 23 and 24: circumstances where there is no dir
Page 25 and 26: Board of Appeal had failed to compl
Page 27 and 28: Article 65(4) of Regulation No 207/
Page 29: through showrooms out of the box (a
Page 33 and 34: The applicant appealed to the Gener
Page 35 and 36: JOST mark in respect of constructio

case comment - ITMA

Create successful ePaper yourself

Delete template?

Save as template?