No likelihood of confusion between CLARENDON HILLS and HILL

European Union
In Cavas Hill SA v Clarendon Hills Distribution (S) Pte Ltd (Case B 1 196 609, September 17 2009), the Opposition Division of the Office For Harmonization in the Internal Market has dismissed an opposition against the registration of the trademark CLARENDON HILLS on the grounds that there was no likelihood of confusion with the earlier mark HILL.

On December 6 2006 Clarendon Hills Distribution(s) Pte Ltd filed an application for the registration of CLARENDON HILLS as a Community trademark for goods in Classes 32 and 33 of the Nice Classification. The application was published in the Community Trademarks Bulletin on May 14 2007.

On August 2 2007 Cavas Hill SA opposed the application in respect of the Class 33 goods - "wines, alcoholic beverages (except beers)" - under Article 8(1)(b) of the Community Trademark Regulation (40/94). The opposition was based on a Spanish registration for the mark HILL (Registration 862 044) for goods in Class 33 (wines). In its defence, Clarendon argued that:
  • the marks were not sufficiently similar to give rise to a likelihood of confusion; and 
  • the word element 'Clarendon' in the mark applied for had a distinctive character.
With regard to the comparison of the goods, the Opposition Division concluded that the goods covered by the marks were identical.

The Opposition Division then turned to the comparison of the marks. From a visual point of view, it held that the marks coincided in the word 'hill', which is the only word in the earlier mark. Moreover, both marks were written in a standard typeface, with no distinguishing features. The differences lay in the addition of the term 'Clarendon' and the letter 'S' at the end of 'hill' in the mark applied for.

From a phonetic point of view, the marks differed to the extent that the word 'Clarendon' in the mark applied for had no counterpart in the earlier mark. However, the second word of the CLARENDON HILLS mark was phonetically similar to the HILL mark. From a conceptual point of view, neither of the two marks had a meaning in Spanish. For the part of the public in Spain that would not understand the meanings of the marks (ie, the average consumer of the goods in question), the conceptual comparison did not influence the assessment of the similarity of the marks. 

Turning to the global assessment of the likelihood of confusion, the Opposition Division pointed out that the word 'hill', which constitutes the earlier mark, is similar, both visually and aurally, to the second of the two words constituting the mark applied for. However, the word 'Clarendon' in the mark applied for should not be overlooked or disregarded from a visual or phonetic point of view. Finally, the Opposition Division highlighted that the earlier mark was not included in the CLARENDON HILLS mark in its exact form, as the letter 'S' had been added at the end.

The Opposition Division concluded that the consumers of the goods in question would notice that the second element of the mark applied for was not identical to the earlier mark. Consequently, they would not be misled into thinking that goods bearing the marks came from the same or economically linked undertakings.

The opposition was thus dismissed in its entirety.

Slawomira Piotrowska, Patpol - Patent & Trademark Attorneys, Warsaw

Get unlimited access to all WTR content