Board of Appeal erred in determining dominant element of mark

European Union

In Ella Valley Vineyards (Adulam) Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-32/10, March 9 2012), the General Court has annulled a decision of the First Board of Appeal of OHIM in which the latter had found that the relevant public might establish a link between the mark ELLA VALLEY VINEYARDS and the earlier mark ELLE. The court held that the expression ‘Ella Valley’ taken as a whole - and not, as found by the Board of Appeal, the component ‘Ella’ alone - constituted the dominant element of ELLA VALLEY VINEYARDS.

Hachette Filipacchi Presse opposed an application for the registration of the mark ELLA VALLEY VINEYARDS (depicted below) for "wines" based on its earlier mark ELLE for, in particular, "periodicals" and "books".

The Opposition Division rejected the opposition, but the Board of Appeal annulled the Opposition Division’s decision.

Before the General Court, the applicant, Ella Valley Vineyards (Adulam) Ltd, claimed that:

  • the goods covered by the marks were different;
  • the reputation enjoyed by the earlier mark was limited; and
  • the marks at issue did not have any particular similarity.

One of the points discussed was the fact that the trademark ELLA VALLEY VINEYARDS was to be used for kosher wines. The applicant claimed that, because of this, the target public would have a level of attention which is higher than average. The General Court rejected this argument, noting that the mark applied for covered "wines" in general. The court thus concluded that the target public for both marks was the general public and, therefore, the public concerned by the goods covered by the marks "overlapped".

The parties agreed that the ELLE mark is well known in the periodical and book sectors in the European Union. Nevertheless, contrary to the Board of Appeal’s conclusion, the court found that the signs at issue were not sufficiently similar for the relevant public to associate the mark applied for with the earlier mark ELLE.

In particular, the court held that it is not indicated anywhere in the case law that, in order to show that the relevant public would make an association between the conflicting marks, it would be necessary to demonstrate that the earlier mark had acquired a reputation in the sector covered by the mark applied for. Therefore, there was no need to establish that the earlier mark had a reputation in the wine sector. Thus, the reputation of the earlier mark was sufficient for the relevant public to establish a link between ELLE and the mark applied for.

Contrary to the Board of Appeal's position, the court concluded that the two words ‘Ella’ and ‘Valley’ could not be perceived separately, since they were both contained within the same black rectangle and were written with the same font and the same colour. Therefore, the expression ‘Ella Valley’ taken as a whole constituted the dominant element of the mark applied for.

The court found that:

  • visually, the marks at issue were only slightly similar;
  • aurally, the marks presented differences which outweighed the elements of similarity; and
  • conceptually, the marks did not present a sufficient degree of similarity (the mark applied for was likely to evoke a place name related to the origin of the wine, which was not the case for the earlier mark).

On this basis, the court concluded that the signs ELLA VALLEY VINEYARDS and ELLE were not sufficiently similar for the relevant public to associate them.

The board's decision was thus annulled.

The decision provides useful guidance for defining the scope of protection of well-known marks, and for assessing when the public is likely to establish a link between a well-known mark and another mark for different goods under Article 8(5) of the Community Trademark Regulation (207/2009).

Lisbet Andersen, Bech-Bruun, Copenhagen  

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