In Case T-393/11, Masottina SpA (Italy) applied for the word sign CA’MARINA for goods in Class 33 “alcoholic beverages, in particular wine, sparkling wine, spirits liqueurs”. Bodegas Cooperativas de Alicante, Coop. V. (Spain) brought an opposition on the basis of earlier CTM MARINA ALTA registered for ‘alcoholic beverages’ in Class 33.
The Opposition Division upheld the opposition on the ground that the goods at issue were identical and that the similarities between the signs under comparison outweighed their dissimilarities. The First Board of Appeal of OHIM dismissed the applicant’s appeal and found that consumers who have been exposed to wines, among other beverages, sold under the MARINA ALTA trade mark and who are offered wines, among other beverages, under the name CA’ MARINA would, in all probability, believe that CA’ MARINA was a new line of wines created by the proprietor of the earlier mark or that there must be a commercial connection between the parties. Even if the two signs must be taken as a whole, the element ‘marina’ has the strongest impact in both of the signs because many EU consumers will associate it with pleasures derived from the sea, whereas the elements which accompany it are either short and meaningless (CA’), or a mere qualifier (ALTA meaning ‘high’).
The applicant submits that, taking into account the fame of the city of Venice, the consumer, in the EU and worldwide, will immediately understand the semantic origin of ‘ca’’. According to the applicant, the term is recurrent. In that regard, the applicant invokes the university of Ca’ Foscari, the Ca’ Rizzonico, office of the Fondazione Musei Civici di Venezia, and the Venecian palaces, Ca’d’oro, Ca’ Dario, Ca’ Farsetti, Ca’ Cirvan, Ca’ del Duca. However, the Court held that with the exception of consumers who understand the Venetian dialect, for whom the mark applied for means the ‘marine house’, other consumers will understand the mark applied for as relating to a ‘marina’, a term which refers, at the very least for the relevant public who speak French, English, Italian, German or Spanish, to the sea or a place bordering the sea or a marina. The relevant public will thus associate that term with the sea, the beach and with marinas.
The fact that the applicant wishes to use the mark applied for only for high quality alcoholic beverages of a certain price and possibly to distribute its goods by a specific distribution channel is irrelevant for the purposes of assessing the likelihood of confusion. Furthermore, the fact that those goods are of different qualities or are distributed by separate channels does not prevent a finding that there is a likelihood of confusion, since those goods can be perceived as designating product lines from the same producer.