So who's the king of the Castell?

In addition to the TEK cancellation application (noted here by the IPKat), the Court of First Instance heard another Community trade mark appeal yesterday in Case T‑149/06 Castellani SpA v Office for Harmonisation in the Internal Market; Markant Handels und Service GmbH. Castellani applied to register the sign pictured here as a figurative Community trade mark for "alcoholic drinks (except beers)" in Class 33 (this was later narrowed to "alcoholic beverages except beer, liqueur, sparkling wine and Champagne"). Markant opposed, citing earlier German registrations of the marks CASTELLUM ("wines, with the exception of sparkling wine", in Class 33 and CASTELLUCA "wines", in Class 33), maintaining that on account of the similarity of the parties' respective marks and the identity of their respective goods there existed a likelihood of confusion of the relevant consumers in Germany.

The Opposition Division disagreed. In its opinion the parties' marks were simply too different to induce confusion, notwithstanding the identity of their respective goods. The Board of Appeal however reversed this decision and allowed the opposition. In its view, given the visual and conceptual similarity of the trade marks and the identity of the goods in question, there was a likelihood of confusion between the applicant's sign and Markant's CASTELLUCA mark. Castellani appealed.

The Court of First Intance annulled the Board's decision. After stating the law the CFI applied it to the facts:

"49 ... the goods covered by the conflicting marks are identical. ... it is therefore necessary to compare only the conflicting signs.

...

52 ... as regards the visual comparison, the trade mark applied for is a compound mark, composed of a word element, ‘castellani’, and a figurative element, consisting of two horizontal lines with a turreted crown in the middle and a shield with a castle with two towers, surmounted by a crown with two palm branches and a Latin cross in the centre.

53 With regard to the significance to be attached to the figurative element as a distinguishing feature, that cannot be the dominant element in the overall impression created by the trade mark applied for. In the present case, it is clear, ... that the figurative elements of the mark in question will be perceived as an illustration of a castle and that those elements have but a weak distinctive character. In the case of a product like wine, a representation of a castle is not an element that allows the relevant public to perceive that figurative component as dominating the image they retain of the trade mark applied for. On the contrary, consumers usually describe and recognise wine by reference to the verbal element which identifies it, since this element designates in particular the grower or the estate on which the wine is produced ... Therefore, the dominant element of the contested trade mark is its verbal element, namely the word ‘castellani’.

54 The Board of Appeal also stated, at point 19 of the contested decision, that the first part of the signs, which in its view was visually the most prominent, namely ‘castell’, was identical. It is true that the word elements ‘castellani’ and ‘castelluca’ have a certain degree of visual similarity, since they are of the same length and the first seven letters are identical and placed in the same order (‘c-a-s-t-e-l-l’). However, although the consumer’s attention is often caught by the first part of words ..., ... the use of the word ‘castle’ is very common for that particular category of goods. The consumer is presented with such a variety of names and goods containing a territorial designation associated with the words ‘castello’, ‘castel’, ‘château’, ‘Schloss’ or ‘castle’ that, in order to be able correctly to identify a wine whose name begins with one of those words, the consumer must examine the suffix attached to it very carefully. In the present case, the final letters of the conflicting signs, that is, ‘a’, ‘n’ and ‘i’ in the contested trade mark and ‘u’, ‘c’ and ‘a’ in the earlier mark, are different.

55 Accordingly, in the overall visual assessment of the signs, the difference established between the word elements ‘castellani’ and ‘castelluca’ is sufficient to rule out any visual similarity between the competing signs.

56 As regards the phonetic comparison, contrary to the Board of Appeal’s finding ..., the dissimilarities between the signs, due to the difference between the suffixes – ‘ani’ in the trade mark applied for and ‘uca’ in the earlier mark – are sufficient for them to be distinguished aurally in German, in spite of the fact that the prefixes (‘castell’) are the same. If the relevant public pronounces the suffixes in question in German, the element ‘ani’ will be pronounced [ani] and the element ‘uca’ pronounced [uka].

57 As regards the conceptual comparison, the Court considers to be incorrect the Board of Appeal’s finding ... that the average German consumer is likely to associate the two marks in the same way with the word ‘Kastell’, which means castle in German, so that the competing signs are conceptually similar.

58 ... the use of a word meaning ‘castle’ is common in the wine sector. Germany is the fourth biggest world market in terms of wine consumption. Although a large share of that market is covered by German wines, the predominant share consists of imports. Germany’s main suppliers of wine are Italy, France and Spain. Consequently, the German consumer is accustomed to seeing a large number of trade marks for wine whose name begins with ‘Schloss’, ‘castello’, ‘château’, ‘castel’ or ‘castle’ when purchasing wine in a specialist shop, a supermarket or a hypermarket or when choosing a wine from a wine list in a restaurant. He will therefore attach less significance to the prefix and closely examine the suffix of the mark on the bottle label.

59 Secondly, the trade mark applied for contains an Italian family name, which will be recognised as such by the target public. Since Italian food and wine and Italian goods are widely available throughout Germany, the average German consumer is accustomed to identifying an Italian name and associating it with a family. It is highly unlikely that the average German consumer will associate the trade mark applied for with the German word ‘Kastellan’. The earlier mark suggests the Castle of Luca or is associated with the town of Lucca, the capital of the province of Lucca in Tuscany, Italy. It follows that there is a conceptual difference between the two signs.

60 Thus, contrary to the finding in the contested decision, when making an overall assessment of the marks at issue, the visual, phonetic and conceptual differences between the conflicting signs are sufficient, in spite of the identical nature of the goods covered, to preclude the resemblances between them giving rise to a likelihood of confusion on the part of the average German consumer".

The IPKat says that the CFI could have added some weight to its analysis, on facts that could have gone either way, by mentioning that, when spoken, the words "Castellani" and "Castelluca" are pronounced by the German consumer with a stress on the third of the four syllables. This would serve to heighten awareness of the differences between them.

Taste wine in a castle here
Learn how to pronounce German correctly here
Cat castles here and here