Wine marks held to be similar based on dominant word elements

The Appeal Division of the Lithuanian Patent Bureau has held that the word mark CHENE was confusingly similar to the figurative trademarks J.P. CHENET and J.P. CHENET J P C CABERNET SAUVIGNON.
On November 12 2010 Les Grands Chais de France SA (France) filed an opposition (No 2631) against the registration of the word mark CHENE (Registration 62424) for goods in Class 33 of the Nice Classification, namely “alcoholic beverages, except beer”, in the name of Jaunalko Ltd (Latvia).
The opposition was filed under Article 7(1)(2) of the Law on Trademarks of the Republic of Lithuania. The provision states that a trademark registration should be declared invalid if it is identical, or misleadingly similar, to an earlier mark registered or applied for in relation to identical or similar goods and/or services.
The opposition was based on the following marks:
  • The earlier international figurative trademark J.P. CHENET (Registration 551533) for "wines, sparkling wines, Champagne wines, spirits and liqueurs” in Class 33.
  • The national figurative trademark J.P. CHENET J P C CABERNET SAUVIGNON (Registration 32275) for “wines” in Class 33.
The Appeal Division stated that the dominant element of the earlier mark J.P. CHENET was the word ‘Chenet’, as the element ‘J.P.’ might be perceived merely as initials, while the graphic element was purely decorative.
With regard to the earlier mark J.P. CHENET J P C CABERNET SAUVIGNON, the Appeal Division stated that it consisted of the image of a bottle with a yellow label, as well as the word elements ‘J.P. Chenet’ and ‘Cabernet Sauvignon’ and a graphic element. In accordance with the practice of the Lithuanian Supreme court, “it is usually accepted that the word element is the dominant element determining the overall impression of complex marks”. The Appeal Division concluded that the dominant element of the mark was the word ‘Chenet’, as the image of the bottle would not remain in the memory of consumers. The importance of the other elements (‘J.P.’ and the graphic element) had already been discussed with regard to the other mark. Finally, the words ‘Cabernet Sauvignon’ were held to be descriptive in respect of the goods in Class 33.  
Therefore, the Appeal Division found that the overall impression of the marks would be dominated by the elements ‘Chenet’ and ‘Chene’, which are confusingly similar as they differ only in one letter. Moreover, ‘Chenet’ and ‘Chene’ are written in block letters, which reinforces the visual similarity of the marks. In addition, when pronouncing the words ‘Chenet’ and ‘Chene’, the voiceless consonant ‘T’ at the end of ‘Chenet’ would not be audible. The words could not be compared semantically, as they have no meaning for Lithuanian consumers.
The Appeal Division thus concluded that the marks were confusingly similar.
With regard to the goods covered by the marks, the Appeal Division found that they belonged to the same group (alcoholic beverages) and, therefore, were identical.  
Based on the practice of the Court of Justice of the European Union, a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa (see Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (Case C-39/97), Paragraph 17). Here, the degree of similarity of the marks was high and the goods were identical; therefore, there was a likelihood of confusion among the public.
A likelihood of confusion includes, among other things, confusion as to the commercial origin of the goods (see Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, (Paragraphs 26 to 30);Lithuanian Supreme Court’s decision in ZAO Torgovij dom potomkov dvora ego imperatorskogo velicesva PA Smirnova v State Patent Bureau (Case 3K-3-167/2003, January 7 2003)).
Analysing the evidence provided by the opponent, the Appeal Division found that the trademarks J.P. CHENET and J.P. CHENET J P C CABERNET SAUVIGNON were popular and well known due to their long-term use and widespread advertising. Consequently, these marks had a higher degree of distinctive character.
The Appeal Division thus upheld the opposition and declared that the trademark CHENE was invalid due to the similarity of the marks and goods at issue.
Ausra Pakeniene, AAA Baltic Service Company-Law Firm, Vilnius

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