Lidl set to finally get CTM for WESTERN GOLD after General Court issues second decision

European Union

The decision of the General Court in riha WeserGold Getränke GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-278/10 RENV, November 24 2015) might possibly put an end to the long opposition proceedings involving the marks WESTERN GOLD and WESERGOLD.

In 2006 Lidl Stiftung & Co KG filed a Community trademark (CTM) application for WESTERN GOLD in respect of spirits, in particular whisky, in Class 33 of the Nice Classification. WeserGold Getränkeindustrie GmbH & Co KG (now known as riha WeserGold Getränke GmbH & Co KG) filed an opposition on the basis of various WESERGOLD marks - namely, a CTM, a German registration, an international registration designating various EU member states, another German registration and a Polish registration, all covering goods in Classes 29, 31 and 32, but not spirits or whisky.

In June 2009 the Opposition Division of OHIM upheld the opposition, finding that there was a likelihood of confusion between WESTERN GOLD and the CTM WESERGOLD.

The First Board of Appeal of OHIM granted Lidl’s appeal in March 2010, holding that:

  • the goods in Classes 29 and 21 were not similar to spirits, in particular whisky, and the non-alcoholic beverages in Class 32 were only similar to a low degree to spirits, in particular whisky;
  • the marks WESTERN GOLD and WESERGOLD were similar phonetically and in appearance to an average degree, but were conceptually dissimilar; and
  • the scope of protection of the earlier mark WESERGOLD was slightly below average in view of the very weak character of the word 'gold'.

The Board of Appeal thus came to the conclusion that there was no likelihood of confusion between the marks.

WeserGold filed a complaint with the General Court, which held in September 2012 (Case T-278/10) that the Board of Appeal should not have neglected WeserGold’s argument that its WESERGOLD registrations have an extended scope of protection. Therefore, the Board of Appeal had failed to examine a relevant circumstance.

This decision of the General Court was then appealed by OHIM to the Court of Justice of the European Union (ECJ). 

The ECJ set aside the decision of the General Court on January 23 2014 (Case C-558/12), holding that the latter had made an error in law. As the General Court had held that, despite the average degree of phonetic and visual similarity, the marks were not similar, the question of an extended scope of protection would no longer be relevant: because of the lack of similarity between the marks, a likelihood of confusion had already been ruled out regardless of the extended scope of protection of WESERGOLD. The ECJ returned the case to the General Court, because the latter had not examined the three other claims raised in the original complaint.

The case thus went back to the General Court, which decided, over nine years after the CTM application was filed by Lidl, that WeserGold’s complaint was not justified, even for the other claims raised in the original complaint.

WeserGold first tried to have the likelihood of confusion between WESTERN GOLD and WESERGOLD reviewed, claiming infringement of Article 8(1)(b) of the Community Trademark Regulation (207/2009). The General Court was not prepared to follow WeserGold in that respect, holding that it had already decided in September 2012 that the marks were not similar and that it had annulled the decision of the Board of Appeal because the latter had not taken the alleged extended scope of protection of WESERGOLD into account.

However, the ECJ had held in its decision of January 2014 that this was not relevant, as the General Court had already decided in a final manner that the marks were not similar. In its new decision, the General Court now believed that it could not reopen the discussion about the similarity of WESTERN GOLD and WESERGOLD, as this had already been decided in the previous case and the only open question - whether or not an extended scope of protection should have been taken into account - had been rejected by the ECJ in January 2014. The General Court therefore stated that it was bound by its own previous decision and that WeserGold could not expect that it would reopen the whole examination concerning the similarity of the two marks. WeserGold’s first claim was thus rejected, and the General Court then turned to the other three claims, which were more formal claims relating to the proceedings.

In its second claim, WeserGold argued that the Opposition Division and the Board of Appeal had only dealt with the CTM WESERGOLD and that a decision relating to the other signs quoted in the original opposition was therefore still missing. The General Court rejected this argument by referring to the decision of the Board of Appeal, which mentioned the prior marks in plural form and, therefore, had dealt with all the earlier marks - and not only the CTM, which was the only basis for the decision of the Opposition Division. Hence, the second claim was also rejected.

WeserGold further argued that its right to be heard under Article 75(2) of the regulation had been infringed, as it had not been advised that the Board of Appeal would also deal with the other earlier marks. The General Court first pointed out the contradiction between this claim and the second claim, and then referred to the functional continuity of the whole opposition proceedings, which allowed the Board of Appeal to examine all questions relating to all marks so that it was not bound by the scope of review in the decision of the opposition division. The General Court was of the opinion that the Board of Appeal, by using this functional continuity, had examined all the earlier marks and had no reason to explicitly inform the parties that it would make a complete examination of all the earlier marks. Hence, the third claim was also rejected.

WeserGold argued in its fourth claim that Article 75(1) of the regulation had been infringed, as the board had not provided sufficient reasons for its decision with respect to the other earlier marks. The General Court referred to previous decisions, holding that the Board of Appeal is not required to deal with all the arguments submitted by the parties and that it can also review them implicitly. The General Court held that the Board of Appeal had taken all the arguments into account and had not neglected any of them, even though it had not dealt with all the arguments explicitly. The fourth claim was thus also rejected, and WeserGold's action was therefore rejected in its entirety after more than nine years.

WeserGold could appeal this decision again to the ECJ. However, the main matter in this case - that WESTERN GOLD and WESERGOLD are not similar - seems to be already settled, and it is unlikely that the ECJ will reopen this issue. The three formal claims which were raised were answered in line with previous case law and it seems unlikely that the ECJ would come to a different conclusion. Hence, it appears that Lidl will finally get its CTM registration for WESTERN GOLD in respect of spirits. The question remains, however, as to whether this is the correct result:

  • Non-alcoholic beverages in Class 32 are complementary to spirits and are also often mixed with spirits, so the finding in these proceedings that the goods were similar only to a low degree is at least questionable.

  • WESERGOLD is a relatively well-known mark in Germany for fruit juices, which are sold to a considerable extent in discount supermarket Aldi (a major competitor of Lidl). If an extended scope of protection had been taken into account, the conclusion as to the similarity of WESERGOLD and WESTERN GOLD might have been different.

  • Finally, it is not clear how many other marks with a similar structure - and, in particular, with the sequence of letters WES*ER*GOLD - really co-exist in the field of beverages (alcoholic or non-alcoholic); if there are only a few, the finding that the phonetic and visual similarity between WESTERN GOLD and WESERGOLD is only average can be questioned. The conceptual dissimilarity cannot outweigh this, as consumers could hear and read 'WeserGold' when someone refers to 'Western Gold'.

Although the decision correctly dealt with WeserGold's claims, the final outcome of this case is at least questionable.

Carsten Albrecht, FPS Fritze Wicke Seelig, Hamburg

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