NEGRA MODELO beer mark downed by Court of First Instance

In Cervecería Modelo SA de CV v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld an opposition to the registration of NEGRA MODELO as a Community trademark.

Cervecería Modela SA de CV (CM), a Mexican company, filed an application with the OHIM to register the figurative mark NEGRA MODELO in Classes 25, 32 and 42 of the Nice Classification. Portuguese company Modelo Continente Hipermercados SA (MCH) filed an opposition based on a national registration of the figurative trademark MODELO registered in Classes 25 and 32.

The OHIM's Opposition Division rejected the application for the goods in Class 32 (beer) on the grounds that there was a likelihood of confusion between the marks. The Third Board of Appeal upheld this decision. CM appealed to the CFI.

CM disputed that there was a likelihood of confusion for three reasons. It submitted that the Board of Appeal had:

• not carried out a global appreciation of the likelihood of confusion on the basis of the overall impression given by the trademarks in question;
  
  
• precluded the figurative elements and the colours described in the application from its evaluation; and
  
  
• incorrectly separated the words NEGRA and MODELO, when deciding on the question of the existence of a likelihood of confusion between the marks.

In response, the OHIM submitted that, with regard to the question of a likelihood of confusion between the marks, the aural and conceptual similarity between them was decisive. Further, the OHIM stated that the Board of Appeal had made a global analysis of NEGRA MODELO and all its constituent elements. In addition, the MODELO mark owner, MCH, argued that NEGRA had no distinctive character in relation to the goods concerned (ie, beer).

The CFI first made the following comment:

"According to case law of the Court of First Instance there is a likelihood of confusion if the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings. In the assessment of the existence of a likelihood of confusion according to Article 8(1)(b) of [the Community Trademark Regulation] it is decisive whether the conflicting signs are designated to identical or similar goods or services and whether the conflicting signs are identical or similar."

In the present case, the goods designated by the marks were the same. As regards the similarity of the signs, the CFI stressed that the Board of Appeal had considered the overall impression produced by the conflicting marks. Furthermore, it stated that the global appreciation of a likelihood of confusion between two trademarks must be based on the overall impression created by them in consideration of their distinctive and dominant components. The CFI emphasized that in order to determine the dominant component of trademarks composed of a number of words, it is necessary to make an analysis of the meaning that each word has for the relevant consumer. In the case at hand, the relevant consumer was the average Portuguese consumer.

Based on an examination of the trademarks in question, the CFI held that MODELO was the dominant component of both marks. It reasoned that the aural and conceptual identity of the dominant component of the marks would neutralize the visual differences between them.

The CFI concluded that there was a likelihood that the relevant public would be led to believe that the goods designated by the conflicting signs, NEGRA MODELO and MODELO, were from the same undertaking or economically-linked undertakings. Consequently, said the CFI, there was a likelihood of confusion.

Lasse A Søndergaard Christensen and Christian Fleischer Christiansen, Gorrissen Federspiel Kierkegaard, Copenhagen