In Case T-250/15, Speciality Drinks Ltd v EUIPO (24 November 2016), the EU General Court upheld the decision of the Board of Appeal which found that there was a likelihood of confusion between the word mark CLAN and the earlier mark CLAN MACGREGOR under Article 8 (1) (b) of the EU Trade Mark Regulation (207/2009/EC). Both of them covering Good and services in Class 33:

'Alcoholic beverages ( excluding beers and wines); but insofar as whisky and whisky based liqueurs are concerned only Scotch whisky and Scotch whisky based liqueurs produced in Scotland'

Relevant public

The applicant argued that Scotch whisky is a drink that is a 'class apart' which is strongly associated with the idea of masculinity, which inspires a devoted following among its connoisseurs and inspires a near cult like devotion in some drinking circles'. The Court found that even if these certain subcategories of Scotch whisky exist, the applicant could not prove that his goods belonged to such a subcategory. Therefore, the Court confirmed that the relevant public would only have an average degree of attention when assessing the likelihood of confusion.

The visual and phonetic comparison

The Board of Appeal held that the signs were visually and phonetically similar to an average degree. However the Court disagreed, stating that the signs at issue only have a low degree of visual and phonetic similarity due to the presence of the element MACGREGOR within the earlier mark- which the Board of Appeal had classified as 'secondary or 'marginal'- and as the applicant pointed out, contains more letters and syllables than the element CLAN.

The Conceptual comparison

The applicant argued that the Board of Appeal did not take into account that the element CLAN is a word that is sometimes used by a large number of people within the EU- including Non English speaker to describe a group of people or a family. The applicant further claimed that when the word CLAN is used in conjunction with MACGREGOR, the element CLAN 'is acting as a qualifying word which helps reinforce the concept of the MACGREGOR family/clan/tribe, rather than a word carrying an independent distinctive meaning'. However the Court again agreed with the Board of Appeal and held that there was a conceptual similarity between the signs, given that in the earlier mark, the element CLAN referred to 'a group of people having a family bond' corresponding to the Macgregors, whilst the mark applied for invoked the concept of such a group in general.

The Court held that the assessment of the signs must be considered as a whole. The applicant argued that the dominant element of the earlier mark was MACGREGOR and not the element CLAN which is 'descriptive' when used in conjunction with the word element MACGREGOR. The Board of Appeals decided not to categorise the element CLAN as the dominant element in the earlier mark and also found that MACGREGOR was neither secondary nor marginal. Therefore, when carrying out a comparison of the signs at issue, the Court confirmed that there was an average degree of conceptual similarity between the signs at issue.

Finally the Court rejected the applicant’s argument that ‘the number of different traders using the mark ‘clan’ in conjunction with a family name also shows that consumers in this sector would be used to seeing the name ‘clan’ used in conjunction with a family name to designate alcoholic products, and particularly Scotch whisky’, as being of no relevance in the present case. By contrast, and contrary to the applicant’s submission, the absence of the ‘family name’ in the mark applied for means that it is not possible to exclude the possibility of a likelihood of confusion. More specifically, while the element ‘macgregor’ enables the earlier mark to be distinguished from those of other traders in the sector, that does not mean that it also excludes the likelihood of confusion between the signs at issue, in particular since the mark applied for comprises the element ‘clan’ only, which is the element wholly reproduced in the earlier mark.

This summary was prepared by Craig Kelly (Legal Assistant at MARQUES' member Baker & McKenzie)