Famous writer’s name held not to be registrable due to likelihood of confusion

European Union
In Cooperativa Vitivinícola S Coop Galega v Office for Harmonisation in the Internal Market (OHIM) (Case T-421/10, October 5 2011), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had annulled the Opposition Division’s rejection of an opposition brought by the owner of an earlier trademark.

In 2007 Cooperativa Vitivinícola S Coop Galega filed an application for the registration of ROSALIA DE CASTRO as a Community trademark (CTM) in Classes 32 (beer, mineral water and non-alcoholic drinks), 33 (albariño wines, brandy and alcoholic drinks (excluding beer)) and 35 (online sales and wholesale of wine and alcoholic drinks) of the Nice Classification.

In 2007 Maria Constantina Sotelo Ares filed an opposition on the basis of an earlier Spanish registration for ROSALIA for goods in Class 33 (alcoholic drinks – wines (excluding beers)). The opposition was based on Articles 8(1)(a) and (b) and Paragraph 5 of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009). In 2008 the Opposition Division rejected the proceedings and the owner of the earlier trademark appealed.

In July 2010 the Fourth Board of Appeal annulled the Opposition Division’s decision due to a likelihood of confusion resulting from the identical and similar goods and services in the application and the similarity of the marks on a visual and phonetic level. Further, the marks were considered to be conceptually identical. The board reasoned that ROSALIA would remind the relevant public of Rosalia de Castro, a 19th-century Galician writer, even though the relevant goods were not related to literature. Cooperativa appealed to the General Court.

As part of its submissions, Cooperativa asked the court to force OHIM to register ROSALIA DE CASTRO as a CTM for the requested goods and services. This submission was considered inadmissible as it was beyond the court’s powers and, in any event, OHIM was required by Article 65 of Regulation 207/2009 to “take all necessary measures” to comply with the court’s judgment. Cooperativa also submitted new evidence which had not been presented as part of the proceedings before OHIM, which was also not admitted.

With the admissibility arguments considered, the court recited Article 8(1)(b) and established case law principles in relation to the application of that provision, before considering the facts of the case in point.

In relation to the relevant public, it was not challenged that the relevant public was the average Spanish consumer. However, the Board of Appeal felt that the public would not pay any particular attention to their choice of the goods; in contrast, Cooperativa highlighted that, due to the variations in quality and price of the relevant goods and the Spanish wine culture, the relevant public would pay more attention to the different characteristics of the goods. The court agreed with the latter’s submissions, but rejected the conclusion drawn from them, considering that it was the different characteristics of the wine, not the brand, to which the consumer paid more attention.
 
Further, the court compared each class of goods and services covered by the application and the registration in turn. In respect of Class 33, it was agreed that the goods were identical. The court then compared the goods in Class 32 in the application with those in Class 33 in the earlier registration, and explained that the goods described in Class 33 included drinks with a low level of alcohol which, like those in Class 32, are designed to quench thirst and might be drunk at the same time and in the same situations. It also noted that non-alcoholic drinks are often sold with alcoholic drinks in the same aisle of supermarkets and in bars and cafés. Moreover, it recognised that beers are a sub-category of alcoholic drinks and sold in the same shops, often in the same aisle as other alcoholic drinks.

Nevertheless, the court did note that the drinks fulfilled different needs. While alcoholic drinks are drunk on special occasions, water and non-alcoholic drinks are drunk daily and water is essential for survival. The consumer would be aware of the difference between alcoholic and non-alcoholic drinks, as many people cannot drink alcohol. As a result, the level of similarity between the goods in Classes 32 and 33 was deemed to be low. In respect of the goods in Class 35, the court agreed with the board that the relevant services referred to the goods covered by the earlier mark and, as such, were similar.

The court then compared the marks with reference to their visual, phonetic and conceptual similarity. It was generally noted that the mark applied for included the earlier mark and that this was an accepted indicator of similarity.

Each aspect of the marks was considered in turn, as follows:
  • In respect of the visual similarity, Cooperativa submitted that the addition of two words resulted in a significant difference to the earlier mark. The board had held that the marks were visually similar, as each contained the word ‘rosalia’. The court agreed with the board and added that the ‘de Castro’ element did not sufficiently distinguish them.
  • In respect of the phonetic similarity, the board had again held that the marks were similar due to the ‘rosalia’ element. The court agreed, adding that this common element was dominant and also prominent due to its length and positioning within the mark.
  • In respect of the conceptual similarity, the board had held that the marks were identical, as the applicant mark was the full name of Rosalia de Castro and the earlier mark was her forename ‘Rosalia’. In its view, the fame of Rosalia de Castro as a 19th-century writer would make the relevant public think of her even if they only saw the name ‘Rosalia’, and despite the fact that the goods were not literary in nature. Cooperativa submitted that, in modern times, the name would be associated with the Spanish businesswoman Rosalia Mera. The court considered the evidence which the board had relied on, but disagreed with its decision. In particular, the court criticised the documents, all of which, apart from a reference to a plane called Rosalia, referred to Rosalia in a literary context. In its view, in respect of "alcoholic drinks - wines", the average Spanish consumer would not think that Rosalia was a reference to Rosalia de Castro and, therefore, the marks were not identical. It did however state that the marks were very similar conceptually because each used the woman’s name Rosalia.
Since the marks were visually and conceptually similar and phonetically very similar, the court deemed there to be a high level of similarity. As the comparison of the goods had shown that the goods were the same in Class 33 and similar in Class 35, there was a likelihood of confusion. In respect of Class 32, although the similarity of the goods was low, the high level of similarity between the marks might create a likelihood of confusion.

In response to this, Cooperativa raised one final argument that, where a mark comprised a forename and surname, the surname would be more distinctive. Rosalia was a common name, but the surname de Castro was rare and, therefore, in Cooperativa’s view, distinctive. The court stated that all of the relevant circumstances must be considered - in particular, whether the surname is widely used or not within the relevant part of the European Union. On the facts, 21,932 Spanish people have the name Rosalia, while only 9,212 Spanish people have the surname de Castro; however, taking into account the entire Spanish population, both names were sufficiently rare that no part of the applicant’s mark could be considered as having greater distinctiveness than the other.

Accordingly, the court dismissed the appeal.

While it did not alter the ultimate decision, the General Court’s analysis of the conceptual similarity of the marks - and rejection of the board’s decision on that point - is helpful, as it emphasises that a mark might be iconic for certain goods, but be relatively unknown for other goods. The case also gives us some further guidance on the practical considerations that might be taken into account in relation to classes which include alcoholic and non-alcoholic drinks, for example, being marketed and sold in the same aisle, the same shops and/or being consumed in the same settings.

Ellie Forrest-Charde and Chris McLeod, Squire, Sanders & Dempsey (UK) LLP, London

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