Complex mark confusion assessment clarified by ECJ

In Office for Harmonization in the Internal Market v Shaker di L Laudato & C Sas, the European Court of Justice (ECJ) has overturned a decision of the Court of First Instance (CFI) and has issued guidance on the way in which to assess conflicts between word marks, on the one hand, and word and device marks (sometimes referred to as complex marks) on the other.

Shaker di L Laudato & C Sas applied to register the word and device mark LIMONCELLO DELLA COSTIER AMALFITANA SHAKER in Classes 29 and 33 of the Nice Classification.

The figurative part of the mark included a picture of a round dish decorated with lemons. Limiñana y Botella SL (LB) lodged an opposition on the basis of a Spanish national registration for the word mark LIMONCHELO for goods in Class 33. Throughout all the proceedings the parties agreed that there was identity of goods in Class 33.

Despite noting that the word element 'LIMONCELLO' in Shaker's mark was descriptive of a liqueur based on lemon zest mixed with alcohol which is well known in Spain, the Office for Harmonization in the Internal Market (OHIM) Opposition Division found that the mark infringed LB's LIMONCHELO word mark. It held that there were visual and phonetic similarities between the dominant element of the applied-for mark and LB's mark. The OHIM Second Board of Appeal affirmed, finding that:

• the dominant element of Shaker's application was the word 'LIMONCELLO';
  
  
• the application and the earlier trademark were visually and phonetically very close to one another; and
  
  
• consequently there was a likelihood of confusion between the two marks.

On appeal, the CFI overturned the board's rulings. The CFI held that the dominant component of the applied-for mark was not the word 'LIMONCELLO', but rather the figurative design of a round dish decorated with lemons. LB appealed to the ECJ.

The ECJ reversed the CFI's decision. It concluded that it is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of a comparison of the dominant elements. It reasoned that word elements in device marks cannot be ignored simply because one or more of the device elements are dominant.

This case is complicated somewhat by the fact that the ECJ did not address the strength of LB's mark. However, the ECJ's ruling has brought welcome clarification in this area.

For background discussion of this case, see Dominant figurative element squeezes out opposition and Opinion calls for dismissal of LIMONCELLO complex mark decision.

Peter Gustav Olson, Plesner, Copenhagen