Wine and wine glasses not similar under Canon factors, CFI rules

In Assembled Investments (Proprietary) Limited v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has annulled a decision of the OHIM First Board of Appeal which upheld an opposition to an application to register the mark WATERFORD STELLENBOSCH (and logo) for alcoholic beverages, including wine.

The OHIM Opposition Division had earlier dismissed glassware maker Waterford Wedgwood plc's opposition, but the Board of Appeal later found that "articles of glassware" and "alcoholic beverages" are similar goods and there is a likelihood of confusion between the marks. The board concluded that the goods are highly complementary in both use and purpose, and it is not uncommon for glassware to be sold in specialized wine retail outlets. It also stated that average consumers in the United Kingdom and Ireland (where Waterford Wedgwood is based) identify the name Waterford with glassware products rather than as a common place name.

On appeal, South African wine maker Assembled Investments (Proprietary) Limited argued, among other things, that nothing proves that the distribution channels of the goods at issue are identical or even similar and it would be absurd to assume that consumers would perceive that the goods are sold under the responsibility of the same undertaking or of economically-linked undertakings just because wine is drunk from a wine glass.

The CFI agreed with Assembled Investments and ruled that articles of glassware falling within Class 21 of the Nice Classification and alcoholic beverages within Class 33 are not similar goods. Therefore, the court reasoned, Waterford Wedgwood's other arguments, such as the alleged degree of similarity between the marks, were not relevant.

The court stressed that Article 8(1)(b) of the Community Trademark Regulation provides that in order for there to be a likelihood of confusion within the meaning of this provision, the goods must be identical or similar. Even when the mark applied for is identical to a mark which is highly distinctive, the similarity of goods must first be established. The issue of similarity of goods must be assessed under all of the Canon factors, including:

• the nature of the goods;
  
  
• their intended purpose and method of use; and
  
  
• whether they are in competition with each other or are complementary.
  

The CFI stressed that the distinctive character of the earlier mark is not an independent part of analyzing whether the goods are similar. Instead, it mentioned that reputation of the earlier mark can be taken into account at a later stage of the examination, in order to assess whether there is a likelihood of confusion.

The CFI concluded that the parties agreed that the goods at issue were distinct by their nature and use, they were not in competition with one another nor substitutable, and they were produced in different areas. Waterford Wedgwood, however, argued that:

• the goods were sometimes distributed through the same channels of trade such as restaurants or specialist wine retailers;
  
  
• certain wine producers may sell their wine with a glass whereby wine and the glass bear the same mark; and
  
  
• wine is consistently drunk from wine glasses and the products in question are therefore complementary.
  

The CFI rejected these arguments as insufficient to prove that the goods are similar within the terms of Article 8(1)(b). The court held that even though wine glasses and wine are sometimes sold in the same places, there was no evidence that such sales represent anything more than a negligible proportion of the overall sales of the articles of glassware concerned. Although wine glasses and wine are also occasionally distributed together for promotional purposes, it had not been shown that that practice by wine producers is of any significant commercial importance. Such distribution is normally perceived by the consumers concerned as a promotional attempt to increase sales of wine rather than as an indication that the producer concerned devotes part of its activity to the distribution of articles of glassware.

Lastly, the CFI stated that there is a degree of complementarity between some articles of glassware, in particular wine glasses, carafes and decanters, on the one hand, and wine, on the other. As wine, however, may be drunk from other vessels and the articles of glassware can be used for other purposes, this kind of complementarity was not sufficiently pronounced for the court to accept that from the consumer's point of view, the goods are similar within the meaning of Article 8(1)(b).

On remand, the Board of Appeal will now have to consider Waterford Wedgwood's grounds of opposition based on Article 8(5) on the protection of marks with a reputation, as it had not done so originally.

Jukka Palm, Berggren Oy Ab, Helsinki

The author was part of the team who drafted Assembled Investments' appeal to the CFI.