CFI applies strict approach to similarity of alcoholic beverages

European Union
In Bodegas Montebello SA v Office for Harmonization in the Internal Market (OHIM) (Case T-430/07, April 29 2009), the Court of First Instance (CFI) has held that rum and wine were dissimilar.
 
On April 24 2002 Montebello SARL applied for the registration of MONTEBELLO RHUM AGRICOLE as a Community trademark for “alcoholic beverages, with the exception of beers”in Class 33 of the Nice Classification. Montebello SARL later restricted the list of goods to “agricultural rum”. On July 11 2003 Bodegas Montebello SA opposed the application based on a Spanish registration for the trademark MONTEBELLO for “wine and other alcoholic beverages” in Class 33. Montebello SARL requested that Bodegas Montebello provide evidence of use of the MONTEBELLO mark for all the goods listed in the registration. Use was demonstrated in respect of wine only.
 
The Opposition Division of OHIM upheld the opposition, finding that there was a likelihood of confusion among the public because the goods covered by both marks were highly similar. However, on appeal, the Second Board of Appeal ruled that there was no likelihood of confusion because the goods were different. Bodegas Montebello appealed to the CFI, which agreed with the reasoning of the Board of Appeal.
 
As Bodegas Montebello had provided evidence of use only in respect of wine, the CFI limited the comparison of the goods to wine and rum. The CFI remarked that “other alcoholic beverages” was too broad a category to distinguish individual sub-categories.
 
The CFI considered that wine and rum were different with regard to their nature, ingredients, production methods, taste, colour and flavour. The CFI noted that Montebello SARL's agricultural rum originates from the Caribbean area, and that this region is not well know for its wine production. The CFI also pointed out that wine is usually drunk at lunch times (while rum is not) and highlighted that the percentage of alcohol is different for rum and wine. The CFI further held that rum is generally sold in specialized shops. The CFI found that although rum and wine may be sold through the same distribution channels, they will usually be displayed in different sections of the shops. Finally, the CFI held that rum and wine are not in competition with each other - rum is not an everyday product sold at low prices, contrary to most wines.
 
This is not the first time that the CFI has applied a strict approach to the comparison of alcoholic beverages. On February 15 2007 the CFI had held that “Porto wine” and “wine of La Roja” were dissimilar using the same criteria (Case T-501/04).
 
However, this approach implies that the relevant public has a high level of attention - especially in light of the fact that both marks in the present case had the same dominant element ('Montebello'). Moreover, the decision contradicts the case law of the French Trademarks Office, which has held that wine is similar to digestives, spirits, beers and, more generally, “alcoholic beverages”.
 
The approach of the CFI will have an impact on the trademark strategies of alcohol producers. Limiting the specification of goods may be a way of differentiating one trademark for alcoholic beverages from another. However, such a limitation may be detrimental in opposition and other proceedings, where it is preferable to cite a larger number of goods.
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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