'Castell' is not distinctive for wines, says CFI

In Castellani SpA v Office for Harmonization in the Internal Market (OHIM), the Court of First Instance (CFI) has overturned a decision by the Board of Appeal of OHIM which had itself overruled an Opposition Division decision finding that there was no likelihood of confusion between the trademarks CASTELLANI and CASTELLUCA.

Castellani SpA filed an application for the registration of the mark CASTELLANI (and castle design) as a Community trademark. Markant Handels und Service GmbH opposed the application based on the German registered trademark CASTELLUCA. Both marks covered alcoholic beverages (specifically wine).

The Opposition Division of OHIM rejected the opposition, finding that the marks at issue were not similar. The Board of Appeal of OHIM annulled the decision of the Opposition Division on the grounds that there was a likelihood of confusion between CASTELLANI and CASTELLUCA.

On appeal, the CFI undertook a fairly conventional analysis of similarity leading to a likelihood of confusion, having found that the goods were identical. Given that Markant relied on a German registration and did not argue for any additional reputation, the CFI approached the case from the perception of the average German consumer. It found that consumers would be likely to pay an average amount of attention to the purchase of wine.

The CFI held that castles are a common designation for wines from many countries. Therefore, the common 'Castell' prefix (as well as the figurative element) was essentially to be ignored, as consumers would not find it distinctive. Given that the suffixes were different, no visual similarity was found. Interestingly, the CFI dissected the marks, while the Board of Appeal examined them as a whole.

As regards the phonetic comparison, the CFI held that the weakness of the prefix 'Castell' was paramount. As the prefix was effectively to be ignored, the different suffixes precluded any phonetic similarity.

On a conceptual level, the suffixes also gained increased importance because of the weak prefix. The CFI concluded that the average German consumer would recognize the word 'Castellani' as an Italian family name and would associate the word 'Castelluca' with the town of Lucca in Tuscany. For these reasons, the CFI found that there was no conceptual similarity.

The opposition was thus unsuccessful despite the resemblance between the marks.

Ian Starr, Ashurst LLP, London