ODA is confusingly similar to RODA, says CFI

In Castell del Remei SL v Office for Harmonization in the Internal Market (OHIM) (T-101/106), the Court of First Instance (CFI) has affirmed a decision by the Board of Appeal of OHIM which upheld the opposition to the registration of the trademark CASTELL DEL REMEI ODA (and design) based on the earlier registered trademark RODA.

On August 1 2001 Spanish company Castell del Remei SL applied for the registration of the mark CASTELL DEL REMEI ODA as a Community trademark for goods in Classes 29, 30 and 33 of the Nice Classification (Application 2325256). On August 13 2002 Bodegas Roda SA filed an opposition against the registration of the mark for goods in Class 33 (alcoholic beverages (except beers)) based on:

• the trade name Bodegas Roda;
  
  
• the trademark RODA (International Registration 703486), which is registered in Denmark, Germany, France, Italy, Austria, Finland, Sweden, the United Kingdom and Benelux in Class 33;
  
  
• the Spanish trademarks RODA (Registration 1757553), BODEGAS RODA (Registration 1536563), RODA I (Registration 2006616) and RODA II (Registration 2006615) in Class 33; and
  
  
• the Greek trademark RODA (Registration 137050) in Class 33.

On January 10 2005 the Opposition Division of OHIM upheld the opposition on the grounds that there was a likelihood of confusion between the marks. On March 8 2005 Castell appealed to the Board of Appeal of OHIM. On January 17 2006 the Board of Appeal upheld the Opposition Division's decision. It based its analysis on the comparison between the mark applied for and Bodegas Roda's international trademark RODA. Castell appealed to the CFI.

On November 14 2007 the CFI affirmed the Board of Appeal's decision on the following grounds:

• The likelihood of confusion must be analyzed globally, according to the perception that the relevant public may have of the marks and taking into account all the factors relevant to the circumstances of the case, including the interdependence between the similarity of the marks and that of the products covered.
  
  
• The level of consumer attention may vary depending on the category of products and/or services covered. Consumers do not ordinarily have the opportunity to compare signs directly and must rely on imperfect recollections.
  
  
• The products at issue in this case (alcoholic beverages) are ordinary consumption goods. The fact that the products marketed by Castell and Bodegas Roda are high-quality wines was irrelevant, as the application covered not only wines, but also other alcoholic beverages (except beers).
  
  
• The word 'oda' was the dominant element of the mark applied for based on:
  
  
  • its size and position;
    
    
  • the fact that the figurative element of the mark (a castle) is commonly used for at least some of the products covered by the application (ie, wines); and
    
    
  • the denomination 'Castell del Remei' referred to Castell's company name.
    
    
• The dominant element of the mark applied for (ODA) and the earlier trademark RODA are visually similar. The presence of the letter 'R' at the beginning of Bodegas Roda's trademark is of little importance.
  
  
• The fact that the labels of the goods produced by Castell and Bodegas Roda include other information (eg, the name of the manufacturer and the denomination of origin) which may serve to differentiate the products was irrelevant.
  
  
• ODA and RODA are phonetically similar. The CFI did not take into account the decisions invoked by Castell (Faber Chimica Srl v OHIM (T-211/03), Les Éditions Albert René v OHIM (T-311/01) and Phillips-Van Heusen Corp v OHIM (T-292/01)), according to which the trademarks FABER and NABER, ASTERIX and STARIX, BASS and PASCH, and CARPO and HARPO-2 can coexist harmoniously in the market.
  
  
• The conceptual differences which might exist in the Italian and German languages between ODA and RODA were irrelevant, as such differences did not exist in the languages of the other relevant countries. Furthermore, even if the name Castell del Remei and the castle design had a conceptual content in the countries covered by the application, such content was insufficient to enable consumers to differentiate the marks.
  
  
• Therefore, there was a likelihood of confusion between the marks based on their visual, phonetic and conceptual similarity and on the identity of the products covered.
  

In reaching its decision, the CFI did not take into account the following elements:

• The Spanish Supreme Court had previously found that there was no likelihood of confusion between ODA and RODA; and
  
  
• Castell's allegations that its products and Bodegas Roda's had coexisted in the market for several years.

Maite Ferrándiz, Grau & Angulo, Barcelona