No likelihood of confusion between 'rooster' marks for wine

In Consorzio vino Chianti Classico v Office for Harmonisation in the Internal Market (OHIM) (Case T-143/11, December 5 2012), the General Court has partially overturned a decision of the Fourth Board of Appeal of OHIM concerning a Community trademark (CTM) application for the figurative mark below, filed in respect of “alcoholic beverages (except beers)” in Class 33 of the Nice Classification in the name of the Fédération française de rugby (FFR).

The Consorzio vino Chianti Classico (CCC) opposed this application on the grounds that, under Article 8(1)(b) of the Community Trademark Regulation (207/2009), there would be a risk of consumer confusion between the marks, and under Article 8(5) of the regulation, there was a risk that registration of this mark would take unfair advantage of, or be detrimental to, the distinctive character and/or repute of CCC’s earlier collective trademark registrations, covering wine or chianti wine in Class 33. 

The earlier rights that CCC relied upon were as follows:

• several Italian collective trademark registrations:

• a UK collective trademark registration:

• the following mark, alleged to be a well-known trademark in Germany and France:

Whilst the Opposition Division of OHIM upheld CCC’s opposition under Article 8(1)(b), the board overturned this decision on the grounds that FFR’s mark applied for was “sufficiently distant” from CCC’s earlier rights for there not to be a risk of consumer confusion. In addition, the opposition was rejected insofar as it was based on Article 8(5).

CCC appealed against this decision to the General Court, arguing that FFR’s application should be rejected in respect of “wines” in Class 33. The appeal was based on two grounds:

1. Misapplication of Article 8(1)(b) of the regulation - the General Court found that the board had erred when considering the likelihood of confusion between the marks from the viewpoint of only UK and Italian consumers, as the opposition was also based upon an earlier well-known mark in France and Germany.  OHIM explained that it had considered only this viewpoint for the sake of procedural economy, as it had only considered the opposition in relation to Italian collective trademark Registration No 856049, being the closest to FFR’s mark. The General Court found that, when assessing the likelihood of confusion between the marks, the board ought to have taken the relevant public to include the average consumers of the goods in all territories covered by the earlier rights in question, including France and Germany. 
   
   The General Court also considered CCC’s argument that the marks were highly similar, in that they both contained images of roosters. The board had stated that the marks were “sufficiently distant” for there not to be a likelihood of consumer confusion between the marks. However, in its judgment, the board had also alluded that there was some similarity between the marks. The General Court found that, whilst both marks contained images of roosters, they exhibited a low degree of similarity, having given consideration to the visual, conceptual and aural similarity between the marks. 
   
   The General Court emphasised the importance of the other visual elements within both marks, besides the rooster images, such as the words, shapes and colours, which made them less similar. In particular, the General Court emphasised the importance of the word elements within each of the marks, and the higher attention that the average consumers of wine would pay to these elements. 
   
   The General Court found that the marks were not conceptually similar. First, the mark applied for was interpreted as being in the form of an armorial emblem associated with the nobility or guilds. In contrast, the earlier rights were considered as being more akin to a seal indicating particular sovereign authority or certification of quality or origin. Second, linguistically the marks were found to be conceptually neutral, or dissimilar in the case of a consumer who had an understanding of French and Italian, as the meanings of the words within the respective marks were different. Third, the General Court found that CCC’s argument that both marks, by using the image of a rooster, conveyed a concept of 'pride' was not sufficiently immediate for consumers to identify conceptual similarity between the marks. The marks were also found to be aurally dissimilar.
   
   Having found that the marks exhibited a low degree of similarity to each other, the General Court assessed whether this was enough for there to be a likelihood of confusion between the marks. Whilst it was accepted that CCC’s earlier marks did have an enhanced earlier distinctive character, in that the single figure of a “black rooster” was associated with Chianti Classico wines, and that the contested goods in question were identical to those covered by FFR’s trademark application, this was not enough to compensate for the low degree of similarity between the marks. It was found that the similarity between the marks was not sufficient to give rise to a likelihood of confusion.



2. Misapplication of Article 8(5) of the regulation - having deemed the marks not similar enough to give rise to a likelihood of confusion, the board had rejected the opposition on the basis of Article 8(5), on the grounds that the initial requirement that marks must be similar had not been satisfied. However, within its decision, the board had indicated that there was a low degree of similarity between the marks. The General Court found that, even a low degree of similarity between marks would be enough to satisfy the initial requirement of similarity under Article 8(5) and this ground should have been considered by the board. The General Court found that the board’s decision should be annulled insofar as it rejected this as a ground of opposition.  
   
   Unfortunately, as the board had not substantively considered this ground, the General Court was unable to make any further assessment, other than to order that OHIM’s decision to reject this ground of opposition be annulled.

This decision clearly emphasises the requirement to fully assess the overall nature of similarity between two marks, and not merely take into account their dominant and distinctive elements. In addition, it is clear that similarity between marks is the key factor in assessing likelihood of confusion. Even where the goods or services in question are identical and the earlier marks have an enhanced distinctive character, this is not necessarily enough to demonstrate that there is a likelihood that the average consumer of the goods would believe the products or services to which they were applied originated from an economically-linked undertaking.

Amanda McDowall and Chris McLeod, Squire Sanders (UK) LLP, London