OHIM held to have erred in finding likelihood of confusion between 'black' marks

In Wine in Black GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-420/14), the General Court has annulled a decision of the First Board of Appeal of OHIM finding that there was a likelihood of confusion between the marks WINE IN BLACK and NOVAL BLACK.

On June 8 2012 Wine in Black GmbH filed an application to register a Community trademark for the word sign WINE IN BLACK for goods in Class 33 of the Nice Classification, including wines. The application was opposed by Quinta do Noval-Vinhos SA, which relied upon its earlier registration for the mark NOVAL BLACK under Article 8(1)(b) of the Community Trademark Regulation (207/2009) (registered for goods in Class 33 corresponding to “alcoholic beverages (except beers)”.

The opposition succeeded, and was further upheld on appeal before the First Board of Appeal of OHIM. The Board of Appeal’s reasons for upholding the opposition included the following:

• The signs had a certain degree of visual similarity – in this regard, although the public was deemed to attach more importance to the initial part of trademarks, that was not the case in this application as the first word ‘wine’ was held to be descriptive of the goods in issue.

• The signs had a phonetic and conceptual similarity in that the signs:

  • contained the same number of syllables;

  • had a similar structure; and

  • coincided in respect of the word ‘black’ and the end.

• The goods concerned could be ordered in restaurants, bars and cafés, which was said to strengthen the role of the phonetic similarly and reduce the importance of the visual differences.

The matter was further appealed, and came before the General Court. 

The General Court had quite a different view of the situation, and annulled OHIM’s decision. The decision of the General Court is not ground breaking and ultimately appears to be a sensible result. What is perhaps most interesting is the fact that the General Court’s assessment and findings on visual, phonetic and conceptual similarities is so fundamentally different from the lower instances.

In this regard, there were various findings that differed between the General Court and OHIM, but the most interesting relates to the General Court’s overall assessment of the conceptual aspects of the marks. For the earlier mark, the court found that the relevant public would pay more attention to the word ‘Noval’ than the word ‘black’. This was said to be because the word ‘Noval’ had no meaning and would not (and could not) be considered as describing the goods. ‘Noval’ would perhaps be perceived as something akin to a company name, and the use of the word ‘black’ (without a preposition) would simply be seen as a qualifier to the fanciful first word.

By contrast, the General Court found that, although the word ‘wine’ in WINE IN BLACK was (in isolation) weakly distinctive in respect of the goods for which protection was sought, the overall expression 'wine in black' was imaginative and evocative and capable as a whole of surprising the public and conveying the idea of a wine of elegance and distinction, rather than a wine that was black in colour. There was, therefore, according to the General Court, a fundamental difference in the concept underlying the two marks, which difference arose out of the inclusion (or exclusion) of the word 'in'.

The court also disagreed with the Board of Appeal’s finding on visual and phonetic similarity, not least because (a) the number of words differed between the two marks and (b) the two were also not pronounced with the same rhythm due to the use of different characters, with the relevant public not necessarily knowing how to pronounce ‘Noval’.

Robert Lundie Smith, EIP, London