LIMONCHELO II: an extreme interpretation of LIMONCHELO I?

In Nalocebar - Consultores e Serviços Ldª v Office for Harmonization in the Internal Market (OHIM) (Case T-210/05, November 12 2008), the Court of First Instance (CFI) has upheld a decision of the First Board of Appeal of OHIM in which the latter had refused to register the composite mark LIMONCELLO DI CAPRI.

Big Ben Establishment applied for the registration of the composite mark LIMONCELLO DI CAPRI as a Community trademark for goods in Classes 30, 32 and 33 of the Nice Classification. Limiñana y Botella SL opposed based on its earlier Spanish registration for the word mark LIMONCHELO for goods in Class 33. The Opposition Division upheld the opposition. The Board of Appeal dismissed Big Ben's appeal, holding that there was a likelihood of confusion between the marks. The application for the registration of LIMONCELLO DI CAPRI was subsequently transferred to Nalocebar - Consultores e Serviços Ldª.

Based on the composite mark confusion assessment set out by the European Court of Justice (ECJ) in LIMONCHELO I (for further details please see "Complex mark confusion assessment clarified by ECJ"), the CFI dismissed Nalocebar’s action and confirmed the following:

• When considering the likelihood of confusion, the assessment of similarity between two marks involves more than taking just one component of a composite trademark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole - which does not mean that the overall impression conveyed to the relevant public by a composite trademark may not, in certain circumstances, be dominated by one or more of its components.
• If all the other components of the mark are negligible, the assessment of similarity may be carried out solely on the basis of the dominant element. This could be the case where that element is susceptible of dominating the image conveyed by the mark in the public’s mind.

In applying the above principles to its comparison of the signs, the CFI held that the component 'Capri' was almost equally important as the component 'limoncello' in the visual impression of the composite mark. In the opinion of the CFI, the other verbal components and the figurative elements in the upper part of the mark would not draw consumer attention. Therefore, they were negligible - or at least of secondary importance - in the overall impression of the mark.

The CFI went on to reiterate that the possibly weak distinctive character of a component within a composite mark does not necessarily mean that this component cannot constitute the dominant element of the mark, because it may still, as a result of its position within the mark or of its size, be susceptible of drawing consumer attention. On this basis, the CFI concluded that the public would retain only the component 'limoncello' and not the word 'Capri'. Hence, 'limoncello' should be considered as the dominant element in the global impression of the mark and there was no reason to assess its (possibly weak) distinctiveness.

With regard to the aural comparison of the marks, the CFI again reduced the composite mark to the component 'limoncello', thereby ignoring all other verbal elements. The CFI found that because the earlier mark was entirely repeated in the later mark, the marks were similar from a phonetic point of view.

In assessing the conceptual similarity, the CFI circumvented the possible descriptiveness – and thus the possibly weak distinctive character – of the components 'limoncello'  and 'limonchelo' by admitting that these might be seen as an allusion to lemon liqueur, while emphasizing that such a meaning would precisely entail a conceptual similarity. In addition, the CFI held that while the word 'Capri' entailed a conceptual difference between the marks, it did not override the overall similarity because the products covered by the earlier mark could also originate from Capri.

After having been rebuked by the ECJ in LIMONCHELO I, the CFI seems to have taken a U-turn by applying a rather extreme interpretation of the principles on the dominant component of a composite mark. In particular, the CFI simply ignored all the other verbal and figurative elements of the composite mark and considered them as negligible, without providing a substantive reason for this position. This approach appeared to suit the CFI, as it allowed it to limit the comparison between the marks to the elements 'limoncello' and 'limonchelo'.

In addition, the CFI reiterated that the possibly weak distinctiveness of these elements was only one of the factors to be taken into account when assessing the likelihood of confusion. This supported its finding that the possibly weak distinctiveness of the earlier mark did not override the likelihood of confusion because of the similarity between the signs and the goods concerned.

This latter consideration fails to attach sufficient importance to the principle set out in Marca Mode CV v adidas AG (Case C-425/98), in which the ECJ held that marks with a lower level of distinctiveness (in particular, because of a lack of reputation) enjoy narrower protection than marks with a higher distinctive character, as a result of which confusion is less likely to arise. In particular, one could infer from the CFI’s decision in the present case that the former principle now applies only where the low distinctiveness results from of lack of reputation - and not if it results from the descriptive character of the mark or from the fact that the mark has become common or generic.

In light of the CFI’s ruling, the possibly weak distinctiveness of the earlier mark seems to have lost some of its importance, resulting in a monopoly for Limiñana. Limiñana may thus prevent any other trademark proprietor from using a mark - even a composite sign - containing a word that is similar to its verbal mark LIMONCHELO on a bottle of lemon liqueur. Given the rather obvious meaning of 'limonchelo', this judgment may thus be considered of rather doubtful merit.

For a background discussion of LIMONCHELO I see "Dominant figurative element squeezes out opposition", "Opinion calls for dismissal of LIMONCELLO complex mark decision" and "Importance of global appreciation highlighted".

Paul Maeyaert and Sébastien Lardinoit, Altius, Brussels