LATINO held to be confusingly similar to LATIN LOVER

European Union
In Heineken España SA v Echter Nordhauser Spirituosen GmbH (Case B 1 373 846, September 7 2009), the Opposition Division of the Office for Harmonization in the Internal Market has held that the trademark LATINO was confusingly similar to the earlier mark LATIN LOVER.
Heineken España SA sought to register LATINO as a Community trademark in respect of “alcoholic beverages made from a combination of red wine and carbonated water”in Class 33 of the Nice Classification. German company Echter Nordhauser Spirituosen GmbH opposed the application based on its earlier German registration for the trademark LATIN LOVER for “alcoholic beverages (except beers)” in Class 33.
The Opposition Division of OHIM held that the marks were similar and that the goods at issue were identical. The interesting aspect of the decision lies in the comparison of the marks.
First, the Opposition Division found that there was a medium degree of similarity between the marks from a visual and aural point of view. In particular, it stated that the marks shared five letters in sequence, 'L-A-T-I-N', which constituted the dominant element of the earlier mark. The marks differed only in the additional word 'lover' of the earlier mark and the final letter 'O' of the mark applied for.  
From a conceptual point of view, the Opposition Division stated that the relevant public would understand LATIN LOVER as referring to “the stereotype of a passionate, romantic Latin American male”, and LATINO as referring to “a person from Latin America”. Therefore, the two marks would be perceived as having an identical or similar semantic content.
Turning to the overall assessment of the marks, the OHIM noted that the average consumer rarely has the opportunity to make a visual comparison between the marks, as the goods at issue are usually referred to aurally in supermarkets, bars, pubs or clubs. This increased the importance of the phonetic similarity between the marks. The Opposition Division also took into account the fact that the main visual and aural elements, 'Latin' and 'Latino',  were placed at the beginning of the marks. It held that:
"the similarity between the signs lies in a distinctive element (LATIN/LATINO) which is visually, phonetically and conceptually similar, while there is not an additional element which is dissimilar enough (LOVER) to counteract the similarities."
The Opposition Division thus concluded that there was a likelihood of confusion between the marks.  

The decision of the Opposition Division is somewhat questionable. Arguably, the marks differed in terms of pronunciation, meaning and overall structure. Moreover, the Opposition Division considered the LATIN LOVER mark as a whole in carrying out the conceptual comparison, but only took into account the word 'Latin' in carrying out the visual and aural comparison. The LATIN LOVER mark should have been considered as a whole to determine whether there was a likelihood of confusion with LATINO.

Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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