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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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MONDAY, 16 NOVEMBER 2015
General Court: who is the 'wisent' bison of them all?

The General Court annulled OHIM's contested decisions in the following cases and found that there was confusion between the applicant's CTMs (Fabryka Wódek Polmos Łańcut SA) and earlier rights owned by CEDC International sp. z o.o. for its żubrówka vodka brand.

T‑449/13- Cancellation Division (case No 1)

T‑450/13 - Opposition Division (case No 2)

 

Image not foundContested CTM registered in Classes 32,33

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Contested CTM application - 'vodka' Class 33

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3D Polish TM No 189866 registered for 'alcoholic beverages’ in Class 33

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CTM No 6215719, registered for ‘alcoholic beverages (except beers); vodka and mixed drinks containing vodka’, in Class 33

Other earlier mark,  among others, invoked in both actions

Image not foundCTM No 5585138

 

Image not foundPolish 3D mark No208090

 

In case No 1, the Cancellation Division declared the contested mark invalid on the ground that there was a likelihood of confusion between that mark and the earlier Polish mark No 189866  according to Article 8(1) b) CTMR. The goods in question are similar or identical and the contested mark and that earlier Polish mark are, at the very least, similar to a low degree and, finally, it took into account that the earlier mark enjoys very high consumer awareness in Poland. With regard to the similarity of the marks, it considered that the marks were visually similar to a low degree and were conceptually similar as a result of the representation of a bison and the vertical display of a blade of grass inside the bottles.

In case No2, the Opposition Division held that the opposition was well founded under Article 8(5) of CTMR. The OD took into consideration, among the earlier marks, the 3D Community mark, No 6215719, and the earlier Polish mark, No 189866. Visually, the marks had minor similarities, phonetically, they had no similarities, and, conceptually, they were similar because they evoked the concept of a bison and represented a bottle containing a blade of grass. In the second place, as a result of their longstanding and intensive use, the blade of grass in the bottle and the representation of the bison had become highly distinctive elements and were connected to the applicant from the perspective of the relevant Polish public. In the third place, the mark applied for is associated with the highly distinctive elements of those earlier marks, which would allow the intervener to benefit unduly from the investments made by the applicant in its marks.

The Board of Appeal annulled both the OD and  CD's decisions and found the marks to be overall dissimilar. With regard to the relevant public, since the earlier marks were registered in Poland, France, Spain, Italy, Ireland and the UK, the relevant territory comprised the relevant public in those States. In the second place, it observed that a thin straight, slightly inclining or diagonal line in the marks compared could not be perceived as a blade of grass. In the third place, the verbal element ‘wisent’, which in English, German and Dutch denotes the European bison, is the most distinctive and dominant element of the mark and its figurative element, consisting of a representation of a bovine animal, is less dominant and distinctive than the verbal element. In addition, the other elements of that mark are either decorative or less striking and they are therefore secondary.

Thus, the earlier Polish mark is a complex mark, and visually the marks concerned have in common a thin line, but they differ with regard to the other, more distinctive, verbal and figurative elements. Phonetically, the marks at issue are not similar. Conceptually, despite the representation of a bovine animal in the contested mark, the verbal element ‘wisent’ of that mark would not be associated by Polish consumers with the idea of a bison, evoked by the element ‘żubrówka’ which forms part of the earlier Polish mark, in so far as it is perceived by those consumers. The other earlier marks overall differ from the contested mark, in particular due to the differences, first, between the verbal elements of those marks, which would be perceived as the most distinctive and dominant elements, and secondly, between the representations of the bovine animals, both in the contested mark and in some of the earlier marks.

Since no similarity between the marks at issue was found, despite the fact that the goods in question were identical or similar, and despite the claim of enhanced distinctiveness and renown in respect of the earlier marks, one of the conditions needed in order to assess whether there was a likelihood of confusion and to benefit from the protection of reputation was absent.

**

Although its grounds for annulation differ slightly in the two cases, the Court found that the 4th BoA had erred in both decisions. It recalled the case-law regarding complex marks and held that the assessment of the similarity can be carried out solely on the basis of the dominant element only if all the other components of the mark are negligible .

Here, contrary to what OHIM maintains, the  'bison' element is just as distinctive as the verbal element ‘wisent’. Therefore it contributes to the same extent as that verbal element, to the overall impression created by those marks, and thus it is that concept which will be evoked above all by the marks at issue. (For case T-450/13, the same considerations apply to the figurative element consisting of a coat of arms occupying the central part of that bottle and of a larger size than the verbal element ‘wisent').

In the second case, the Court specified that those schematic representations of what might be a blade of grass cannot, however, be perceived, contrary to what the opponent claims, as an actual blade of grass, as opposed a more realistic representation of a blade of grass, or an actual image of a blade of grass placed inside a bottle. Thus, given its perception of that figurative element as a simple straight, slightly inclining or diagonal line traversing a bottle, the Board of Appeal was correct in finding that, as there were other figurative elements, that element was less distinctive and played a secondary role in the assessment of the similarity of the marks at issue.

In any event, the secondary elements, which are also conceptually concordant, consisting of the representation of a bottle and a straight, slightly inclining or diagonal line, may harmoniously incorporate the semantic content conveyed by the marks at issue.

Therefore the contested decisions are vitiated by errors in the assessment of the visual similarity and of the conceptual similarity of the marks at issue and the BoA ought to have carried out an overall assessment of the likelihood of confusion and examined whether the other conditions of Article 8(5) CTMR were met. The GC remanded to the Boards.

Posted by: Laetitia Lagarde @ 18.39
Tags: General Court: vodka, żubrówka, bison, wisent,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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