Beer marks held to be dissimilar due to different meanings
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The Appeal Division of the Lithuanian State Patent Bureau has held that the word mark JUODASIS GINTARAS (Registration 62586) was not similar to the word marks BALTIJOS GINTARINIS (Registration 27853) and GINTARINIS (Registration 36269), and was thus valid. All the marks were registered for identical goods (“beer”) in Class 32 of the Nice Classification.
On November 22 2010 Lithuanian brewery Svyturys - Utenos alus filed an opposition (No 2634) against the registration of the word mark JUODASIS GINTARAS in the name of another Lithuanian brewery, Kalnapilio-Tauro grupe.
The opposition was based on Article 7(1)(2) of the Law on Trademarks of the Republic of Lithuania, which provides that a trademark registration should be declared invalid if it is identical, or misleadingly similar, to an earlier mark registered or applied for in connection with identical or similar goods and/or services. The opposition was based on the earlier registered trademarks BATIJOS GINTARINIS and GINTARINIS.
The Appeal Division dismissed the opposition. In particular, it stated that the comparison of the marks should be based on their overall impression, taking into account their distinctive and dominant elements. The dominant element of the opponent’s BALTIJOS GINTARINIS mark (‘of Baltic amber’ in English) was the word ‘Gintarinis’ (‘of amber’), as the first word ‘Baltijos’ (‘Baltic’) indicated a geographical place. The second trademark, GINTARINIS, consisted of one word, which was thus the dominant element of the mark. The Appeal Division rejected the argument that the word ‘Gintarinis’ is descriptive in respect of beer because it is often used in the relevant market to describe the colour of the goods. It found that the word did not directly describe the colour and was only vaguely suggestive.
The Appeal Division noted that the opposed mark JUODASIS GINTARAS consisted of two words, ‘Juodasis’ (‘black’) and ‘Gintaras’ (‘amber’). The first word indicated a colour and described the second word, the noun ‘amber’. The combination of these two words had a clear and direct meaning describing the particular kind of amber. Therefore, the combination of the words created a single conceptual unit which could not be divided into separate elements. The Appeal Division thus concluded that the overall impression created by the marks was different.
Turning to the visual comparison of the marks, the Appeal Division noted that the beginning of the marks was different. The first words of the opponent’s marks are ‘Baltijos’ and ‘Gintarinis’, while the opposed mark begins with the word ‘Juodasis’. The Appeal Division highlighted that the beginning of the marks is more important than the ending, since it is seen immediately by the relevant public (see TURKISH POWER (Case T-34/04), Paragraph 56).
Further, the Appeal Division recognised that the second word of the opposed mark, ‘Gintaras’, and the dominant element ‘Gintarinis’ of the opponent’s trademarks had a certain degree of similarity, since the adjective ‘Gintarinis’ is derived from the noun ‘Gintaras’. However, this alone was not sufficient to conclude that the marks were similar in light of the differences between them.
Phonetically, the Appeal Division noted the difference in pronunciation and accentuation between the first words of the opponent’s marks, ‘Baltijos’ and ‘Gintarinis’, and the first word of the mark applied for, ‘Juodasis’. Taking into account the fact that these words were placed at the beginning of the marks, the Appeal Division concluded that the marks were dissimilar from a phonetic point of view.
Conceptually, the Appeal Division found that the meaning of the marks was different. As explained above, the opposed mark JUODASIS GINTARAS would be perceived as referring to a particular type of amber, while the word ‘Baltijos’ in the opponent’s trademark indicated a geographical place and the word ‘Gintarinis’ was an adjective describing a quality or characteristic of a noun.
Based on the foregoing, the Appeal Division concluded that the marks were dissimilar. Therefore, there was no likelihood of confusion, even if the goods were identical.
The decision is important in that it builds up the practice of the Lithuanian Patent Bureau in cases involving word marks containing almost identical elements.
Vilma Dauskurdiene, AAA Baltic Service Company - Law Firm, Vilnius
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