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PAOLA vs. VILLA PAOLA – Wine vs. Rum
In Case R 414/2013-4,
the Fourth Board of Appeal of the OHIM decided an appeal against the first
instance decisions taken by the Opposition Division in a dispute between the
trade marks ‘PAOLA’ (‘rum’) and ‘VILLA PAOLA’ (‘wines’).
On 17 May 2011, MAISON
A.E. DOR (‘MAISON’) designated the European Community in international
registration No. 1081570 for the word mark ‘PAOLA’, covering (following a restriction of goods) ‘rum’. VILLA
ATUEL, S.A. (‘VILLA ATUEL’) opposed the application, based on its earlier Community Trade
Mark no. 3275781 ‘VILLA
PAOLA’ (word sign) for wines.
On 29 January 2013, the Opposition Division adopted a
decision stating that the conflicting goods are similar (‘Despite a different production process, they have the same nature and
pertain to the same category of alcoholic drinks intended for the general
public. Both can be served in restaurants and in bars, are displayed in the
same section of a supermarket, may be produced by the same undertakings and are
in competition with each other’) and that the signs are visually, aurally
and conceptually similar to the extent that they coincide in the word element
‘PAOLA’. Accordingly, a likelihood of confusion on the part of the relevant
public was found and the opposition was upheld and consequently the trade mark application
was refused.
MAISON appealed
the decision. It claimed that the conflicting goods were different (in nature, method
of production, way of consumption and in the taste, colour and smell of the
products) and that the signs were dissimilar (different beginning, construction,
rhythm, and pronunciation; further, it claimed that the element ‘PAOLA’ refers
to a female name in the contested sign, whereas in the earlier mark it was a
reference to a vineyard where the products were produced). No observations in reply were
submitted by VILLA ATUEL.
On 14 January 2014, the Board of Appeal issued
its decision. Following its prior decision of 18 July 2013, in Case R 233/2012-G, ‘PAPAGAYO
ORGANIC / PAPAGAYO’, the Board held
that there is only a very low degree of
similarity between ‘wines’ and ‘rum’: although both products are alcoholic beverages,
share the same distribution channels and are offered together and might be
consumed together in one single drink (side note: this blogger can attest this
fact), the ingredients from which wine and rum are produced as well as the
production process of the two drinks are very different.
In respect of the comparison between
signs, the BoA stated that the words ‘VILLA’ and ‘PAOLA’ must be considered as
co-dominant, as it had not been demonstrated that ‘VILLA’ has a descriptive
meaning in relation to ‘wines’. However, the fact that the contested mark was
entirely incorporated by the earlier mark and that the sole difference between
them was the additional word ‘VILLA’ in the earlier sign resulted in the two signs being visually
and aurally similar to an average degree. From a conceptual point of view, the BoA found that
none of the signs had a meaning and that, therefore, such point of view should
be ignored.
Having found that there was a very low degree of similarity between ‘wines’
and ‘rum’ and an average degree of similarity between the opposing signs, the
BoA proceeded to the overall assessment of the likelihood of confusion
between the two trade marks. In its decision, it clarified that a
likelihood of confusion does not necessarily exists in all cases where the
signs and goods are similar to various degrees and that the finding of
likelihood of confusion also depended on the distinctiveness of the earlier trade
mark. Since no evidence to prove an enhanced distinctiveness of the earlier
mark had been provided and that ‘rum’ and ‘wines’ have only few features in
common, the Board held that average
consumer will be able to safely distinguish the conflicting marks despite the
coincidence in the element ‘PAOLA’.
Consequently, the Board of Appeal decided to annul the
appealed decision and rejected the opposition in its entirety.
Tags: OHIM, Board of Appeal, Relative Grounds, Wine, Rum,



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