Marks for wine and vinegar held to be confusingly similar

European Union
In Muñoz Arraiza v Office for Harmonization in the Internal Market (OHIM) (Case T-138/09, June 9 2010), the General Court has upheld a decision of the Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the trademark RIOJAVINA for vinegar and services related to the marketing of vinegar, and the earlier mark RIOJA for wine.
 
In 2004 Félix Muñoz Arraiza filed an application for the registration of the word mark RIOJAVINA as a Community trademark. Registration was sought for the following classes of the Nice Classification:
  • Class 29: "Preserves, edible oils and fats from la Rioja";
  • Class 30: "Vinegar, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, ice"; and
  • Class 35: "Sole agencies, representation services, wholesaling, retailing, export, import; all the aforesaid relating to preserves, oils, edible fats, vinegars, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, sauces (including salad dressings), spices and ice".
In 2005 a notice of opposition was filed by Consejo Regulador de la Denominación de Origen Calificada Rioja based on a series of earlier trademarks, including a Community collective mark comprising the word 'Rioja' (Registration 226118) for wine in Class 32. Consejo Regulador argued that Muñoz Arraiza’s RIOJAVINA mark could not be registered because it was confusingly similarity to its earlier mark and, therefore, created a likelihood of confusion on the part of the public.
 
The Opposition Division of OHIM partially found in favour of Consejo Regulador. It upheld the opposition in respect of vinegar and certain of the services in Class 35, but rejected the opposition with regard to the remaining goods and services. The Board of Appeal affirmed, finding that the low degree of similarity between the goods and services was offset by the high degree of similarity between the marks. Consequently, European consumers could easily be led to believe that Muñoz Arraiza’s goods and services originated from the wineries producing wines marketed under Consejo Regulador’s mark - a likelihood that was all the greater given that Rioja wines enjoy a reputation. Muñoz Arraiza appealed to the General Court.
 
Before the court, Muñoz Arraiza argued that, since Consejo Regulador is not a producer of Rioja wine, but merely an administrative body of the Spanish government responsible for ensuring the quality of Rioja wines, it was not an undertaking with which Muñoz Arraiza might compete. Furthermore, it was difficult to imagine that a consumer might think that Muñoz Arraiza's goods came from an administrative body such as Consejo Regulador. Against this background, Muñoz Arraiza claimed that there was no likelihood of confusion.
 
The court stated that, if there is a similarity between the marks at issue and the goods and services covered, it will not be necessary to determine whether the public might think that the wines sold under the earlier mark come from Consejo Regulador or another company. As both the earlier mark and RIOJAVINA would constitute indications of commercial origin in the mind of the relevant public, a likelihood of confusion could not automatically be ruled out, even if Consejo Regulador is not a producer of Rioja wine.
 
The court then assessed whether there was a likelihood of confusion between Muñoz Arraiza’s trademark and Consejo Regulador’s earlier mark.
 
With regard to the similarity between the goods and services, the court agreed with the Board of Appeal that there was a low degree of similarity between vinegar and wine. The court found that, even though vinegar is not a drink like wine, both products can be used in food preparation, and vinegar is commonly obtained by acetous fermentation of wine.
 
Following the assessment of the visual, phonetic or conceptual similarities between the marks, the court concluded that the board had correctly found that there was a high degree of similarity between Muñoz Arraiza’s RIOJAVINA mark and Consejo Regulador’s earlier mark.
 
With regard to the likelihood of confusion, the court held that the low degree of similarity between the goods and services was offset by the high degree of similarity between the marks. Therefore, the relevant public was likely to believe that the goods and services offered under the RIOJAVINA mark had the same commercial origin as the wine marketed under Consejo Regulador’s earlier mark.
 
The action was thus dismissed. 
 
Lasse A Søndergaard Christensen and Jesper Madsen, Gorrissen Federspiel, Aarhus

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