Complementary goods sold under similar marks may cause confusion

European Union

In Waterford Wedgwood plc v Assembled Investments (Proprietary) Limited, the First Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has annulled the decision of the Opposition Division to dismiss the opposition to the registration of the mark WATERFORD STELLENBOSCH (and logo).

Assembled Investments (Proprietary) Limited applied to register WATERFORD STELLENBOSCH (and logo) for alcoholic beverages, including wines in Class 33 of the Nice Classification. Waterford Wedgwood plc, best known for its range of glassware products, opposed the application based upon its prior Community trademark registration for WATERFORD covering various items across a range of classes, in particular "articles of glassware" in Class 21.

The Opposition Division rejected the opposition on the basis that (i) the marks and goods were not identical, and (ii) there did not exist a likelihood of confusion within the meaning of Article 8(1)(b) of the Community Trademark Regulation since the mere fact that wine was drunk from a glass did not render the goods in question similar.

The Board of Appeal found that the Opposition Division relied on an incomplete evaluation of the evidence of reputation submitted on behalf of Waterford Wedgwood. The board reviewed the evidence and concluded that the average consumer in at least the United Kingdom and Ireland would identify the term 'Waterford' with Waterford Wedgwood and its glassware products. It thereby rejected the view of Assembled Investments that the relevant public would identify Waterford as a common place name. Although Assembled Investments alleged that the term 'Waterford' was not distinctive due to the fact that there are other trademarks consisting of this term, the board stated that relative grounds for refusal must be assessed by reference to the Community Trademark Regulation as interpreted by the Community judicature, and not by reference to other national registrations of trademarks for other products and services.

In contrast to the decision of the Opposition Division, the board found "articles of glassware" and "alcoholic beverages" to be similar goods. It noted that the goods complement one another to a high degree in both use and purpose, since in the consumption of a fine wine, the type of glass used is important. When a fine wine is consumed on a special occasion, it is likely that high quality crystal will be used to serve that wine and particular attention will be given to the way that it is served. The board went on to note that, in light of the specific attention that is paid to the serving of wine, it is not uncommon for glassware to be sold in specialized wine retail outlets. It was therefore reasonable to assume that wine and wineglasses could be distributed in the same outlets and be sold by the same company.

The board concluded that given the high degree (i) of similarity between the marks, and (ii) to which wine and wineglasses complement each other, there exists a risk of confusion arising on the part of the public within the UK and Irish markets. The natural differences between wine and wineglasses would not prevent consumers within the relevant market from believing that both products were manufactured under the control of the same company.

Gavan Ferguson, FR Kelly & Co, Dublin

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