Opinion calls for dismissal of LIMONCELLO complex mark decision

Advocate General Kokott has called on the European Court of Justice (ECJ) to overturn the European Court of First Instance's (CFI) decision to dismiss an opposition against an application to register the complex mark LIMONCELLO DELLA COSTIERA AMALFITANA (the LIMONCELLO complex mark).

The case originated when Shaker di L Laudato & C Sas (Shaker) filed an application to register the LIMONCELLO complex mark as a Community trademark for goods in Classes 29, 32 and 33 of the Nice Classification (alcoholic beverages except beers). Following a request by the Office for Harmonization in the Internal Market (OHIM), the application was limited to only lemon liqueurs from the Amalfi Coast as regards the goods in Class 33.

Limiñana y Botella SL, the owner of the Spanish trademark LIMONCHELO for goods in Class 33, filed a notice of opposition against Shaker's application.

The OHIM Opposition Division upheld the opposition and refused the registration of the LIMONCELLO complex mark on the grounds that there was a likelihood of confusion on the Spanish market given the identity of the goods in question and the similarity between the marks when considered globally.

Shaker's appeal to the OHIM Board of Appeal was dismissed on the basis that there was a likelihood of confusion between the two signs. Shaker appealed to the CFI.

The CFI upheld the appeal and overturned the earlier decisions. The CFI held that, pursuant to the Community Trademark Regulation, a likelihood of confusion:

"depends on numerous elements and, in particular, on the recognition of the trademark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trademark and the sign and between the goods or services identified."

In its assessment of the LIMONCELLO complex mark, the CFI found that the dominant element was the figurative image of a plate of lemons. This aspect of the mark had a high level of distinctiveness compared with the other elements, and in particular with the word element 'LIMONCELLO'. Accordingly, it held that there was no likelihood of confusion between the LIMONCELLO complex mark and the earlier LIMONCHELO word mark. The decision was appealed to the ECJ.

In her opinion on the case, Kokott stated that the decisive issue was whether the CFI did in fact identify a dominant component of the trademark applied for based on its own definition as set out in the MATRATZEN Case, which emphasizes that:

"a complex trademark, one of whose components is identical or similar to another mark, cannot be regarded as being similar to that other mark, unless that component forms the dominant element within the overall impression created by the complex mark."

In addition, the component must be:

"likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it. It is only if all other components of the mark are negligible that the dominant component alone can be assessed as to similarity."

In Kokott's view, the CFI made no such finding in the case at hand. On the contrary, Kokott pointed out that the CFI described the plate as dominant in relation to the other elements and found that the plate covered most of the lower two-thirds of the mark claimed, while the word element 'LIMONCELLO' covered only a large part of the upper third. In its subsequent comparison of the various elements of the LIMONCELLO complex mark, the CFI confined itself to denying that those other elements were dominant. However, none of those stages in its assessment led to the conclusion that the plate dominated the LIMONCELLO complex mark to such an extent that all other elements were negligible.

Kokott concluded that the LIMONCELLO complex mark did not contain a component that would justify restricting - in accordance with the approach the CFI has developed - the comparison of the marks, in terms of the likelihood of confusion, to that particular component. Instead, a global assessment of the likelihood of confusion should have been made with regard to both marks. Thus, she urged the ECJ to overrule the CFI's decision in light of the strong risk of confusion between the two marks based on an overall assessment of the marks.

Margherita Bariè and Pietro Pouchè, Carnelutti Studio Legale Associato, Milan