The General Court's decision 

The GC started by rejecting the applicant's argument that the earlier mark was not put to normal use: the trade mark holder had submitted 53 invoices showing the sale of thousands of bottles of wine under the mark [paras 26-42]. It then examined the argument that, as far as wines are concerned, there is not necessarily a similarity of goods because wines vary significantly with respect to terroir, grape variety, label and price. 

Even if consumers take into account designations of origin when purchasing wines, that is not a point of such systemic importance that wines of different origins can constitute separate categories of goods [para 56 and the case-law cited there]. Moreover, the registration at issue was not limited to a particular type of wine, so the applicant could not rely on any argument based on alleged differences between wines [para 57]. 

Next, the GC turned to the comparison of signs. It noted that, whereas the BoA had correctly considered 'Luciano' to be the distinctive element in DON LUCIANO, it had erred when assessing the distinctive element in LUCIANO SANDRONE [para 76]. The BoA had found that in Germany and Finland, both the first name 'Luciano' and the last name 'Sandrone' are rare, so that each element is equally distinctive. 

The GC, however, cited case-law showing that as a general rule a surname is more distinctive than a first name [para 71]. It held that 'Luciano' is a common first name in Spain, Italy, Portugal and France. It then found that, "in view of the numerous exchanges within the European Union and of current means of electronic communication", this meant it could not be considered a 'rare' name in other Member States, such as Germany or Finland, even if it is not common there. Consequently, the distinctive elements of the signs were LUCIANO and SANDRONE, respectively, for the earlier sign and the trade mark applied for. 

The GC then found that there is at least a low degree of visual and phonetic similarity between the signs [paras 78 & 80] and proceeded to clarify the case-law on the conceptual comparison of names, noting that it was unsettled on this point [paras 82 & 83]. 

It considered that the conceptual comparison seeks to compare the semantic content of signs and that names of celebrities or names with a clear semantic content might, consequently, be subject to a conceptual comparison [para 86]. But names which do not convey a 'general and abstract idea' – i.e. 'ordinary' names such as those in dispute – are devoid or semantic content and lack any 'concept' which makes a conceptual comparison impossible, according to the GC [para 85]. Thus, in this case, a conceptual comparison should not have been carried out. 

Lastly, the GC performed the global assessment of the likelihood of confusion. At least a low degree of visual and phonetic similarity, an average degree of conceptual similarity and partial identity of the goods had led the BoA to find a likelihood of confusion. But the GC held that the BoA had applied the interdependence test between similarity of signs and goods "mechanically" and found four errors in its approach. 

First, it wrongly held that the element LUCIANO is distinctive in both signs and found an average degree of conceptual similarity. Second, it failed to take into account the specific characteristics of the goods. Third, it did not take into account the prevalence of Spanish or French names in the wine market, which means that the mere fact that both products contain such names do not necessarily mean consumers will perceive them as emanating from the same undertaking. Fourth, it failed to take into consideration that the shared element 'Luciano' has a low degree of distinctiveness. 

The GC held that "names carry great weight" in the wine-growing world [para 99], and concluded that it is "implausible" that the average consumer might perceive an economic link between undertakings just because two bottles of wine feature the name Luciano [para 101]. Specifically for wines, these types of names are common in product names and will not be used to identify them: rather, it will be the more distinctive last name 'Sandrone'. Consequently, there was no likelihood of confusion between the signs, and the appeal was upheld.

Señor Pepe is devoid of semantic content (Meme Credit: Cheezburger.com)

Comment

The decision is a useful reminder that the goods matter more than is often thought when assessing likelihood of confusion. Evidence of branding practices specifically in the wine sector nuance (i) the distinctive character of the element LUCIANO and (ii) the manner in which consumers will perceive it. At first glance, DON LUCIANO and LUCIANO SANDRONE might be considered confusingly similar, because Luciano is a name and therefore prima facie distinctive. But this might be different for particular goods, such as wines, and the fact that the appellant could establish this tilted the case in its favour before the GC. The GC's approach also reminds us that trade mark applicants might further influence the average consumer's perception by specifying a particular type of goods, such as 'Italian wines', instead of just wines.

When it comes to the GC's clarification of the law on conceptual comparison of name signs, however, I have some doubts. In my view, names do not just refer to individual persons: they can also be suggestive of regions, class and tradition. The GC itself cites with approval the BoA's finding that 'Don' will be understood as "a Spanish honorific title indicating Sir/Mister" [para 66]. That means the sign DON LUCIANO might invoke the idea of a Mediterranean gentleman, and the trade mark holder surely considered it desirable to connect this image to its wines.

Signs like JOHNNY WALKER, LORD NELSON or TRADER JOE, all of which also ostensibly refer to a person, invoke different imagery, and that difference should be part of the conceptual comparison. Particularly the addition 'Don', which suggests a certain nobility, sets this case apart from the cases referred to by the GC in par. 87, which concerned mere names such as McKENZIE or PEDRO. Thus, I would not rule out that some conceptual content might be ascribed to signs like these, which are apparently meant to invoke the flair of southern European gentry.

Another point worth noting is the GC's finding that within the EU there are "numerous exchanges", facilitated by "current means of electronic communication". According to the GC, this means that the commonplace use of certain names in some Member States might mean they have a lower distinctive character also in other Member States, where they are not common. It is fair to assume consumers all over the EU have at least some familiarity with the name Luciano, as the GC does, but it is rather surprising that it finds so explicitly that the weakened distinctive character spills over to other Member States.

This finding points at a tension that underlies European trade mark law, which is harmonized across the EU while national and regional differences still influence the content of the rights granted. That is visible perhaps most clearly when it comes to distinctive character, which can differ starkly across various Member States. The more we acknowledge that in actual fact, there is ample exchange between consumers across the EU, the more our fiction of the "average consumer" in European trade mark law will approach reality.

Earlier this week the poll closed on a simple question: is there a likelihood of confusion between these two figurative marks? By a four-to-one majority, readers of this blog declared that, in their view, the marks were not likely to be confused with one another.  The final figures were as follows: 141 voters said yes, confusion was a likely outcome; 641 (that's nearly 82% of the total 782 votes case) said no.

The poll was inspired by the Kat's surprise at the ruling of the General Court in Case T-35/08 Codorniu Napa v OHIM - Bodegas Ontañon (ARTESA NAPA VALLEY), noted on Class 46 here by Laetitia Lagarde, that there was indeed a likelihood of confusion.  The General Court was not alone in its view, since it upheld the position taken both by the Opposition Division of the Office for Harmonisation in the Internal Market and by the Fourth Board of Appeal.

The IPKat, who was schooled on a primitive pre-harmonisation notion that likelihood of confusion, in common with likelihood of rain -- or indeed any other likelihood that was based on real-world considerations -- was a statement of probability that was based on real facts.  The modern fashion in Europe trade mark legal thinking is that, since "likelihood of confusion" is a term which forms part of the legislation which lawyers apply and interpret, its real significance is as a question of law, not fact.  You define a set of legal criteria which, if satisfied, constitute a legal state of likelihood of confusion; then you tick the boxes for the various criteria. If the right boxes are ticked, then "likelihood of confusion" exists, whether there is a likelihood of confusion or not.

The fact that the concept has been defined in such complex terms, in spite of the admirable brevity of the terminology used in the Community Trade Mark Regulation and the harmonisation directive, is both the result of too many appeals of points of law and the cause of too many more of them -- and even then the application of the facts to the law often produces decisions which are technically correct, as this decision appears to be, but nonsense in the world in which, for example, shoppers look at wine bottles with figurative marks on them such as these.

A consequence of results such as these, however technically correct they may be in legal terms, is that a lot of marks are excluded from registration even though, on a day-to-day basis, it is hard to imagine them causing anyone any problems in commercial terms.  Much is made of the claim that it is too hard to register new marks because of all the old marks that are already there.  If the existing marks took up less space, because more realistic criteria for likelihood of confusion are imposed, there would be less of a problem.

In a more sensible world, asks the mischievous Merpel, would it not be fun to dispense with the ritual of box-ticking and the pompous formality of pseudo-scientific formulations of legal tests of what the relevant consumer can generally determine at a glance?  Why not engage panels of wine-drinkers, chocolate eaters, washing detergent users, health-insurance seekers or whatever and simply ask them?

Don't read the ruling in which a comparison of the two signs displayed here was undertaken (the IPKat isn't even giving its jurisdiction or citation yet). Just bear in mind the fact that they are intended for use on identical goods (let's say wines).

Take a look at these marks and bear in mind that

"... the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. In accordance with that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of marks and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, particularly the interdependence between the similarity of the trade marks and that of the goods or services covered ".

The 'public', for these purposes, consists of average consumers.

Do you consider, on the basis of the above, that there is a likelihood of confusion between the two marks? Please give your answer by clicking the "yes" or "no" button in the poll that appears at the top of the IPKat's side bar.

Glen Gibbons was first to send the IPKat a link to a decision from the Irish High Court last month but which only recently seems to have surfaced as a web link. The decision, Cofresco Frischalteprodukte GmbH & Co KG v Controller of Patents, Designs and Trade Marks; Reynolds Metals Company [2007] IEHC 187, was delivered by Mrs Justice Finlay Geoghegan on 14 June 2007.

Reynolds applied to register as a trade mark the word TUB-ITS for “storage containers, not of common metal, for household and kitchen use” (Class 21). Cofresco opposed, citing its earlier Community trade mark registration of the TOPPITS logo for identical and similar goods. The main ground of opposition - one of many, it seems - was likelihood of confusion, by virtue of similarity of the marks and identity/similarity of goods.

The Irish Patents Office rejected the opposition: in the first place any likelihood of confusion was reduced by the fact that the average consumer was likely to pay at least as much attention to functional considerations as he would to brand names when purchasing plastic kitchen and household containers. As to the marks, Cofresco's was defined by its look and sound and its lack of meaning, while the dominant aspect of Reynolds' mark was its meaning (“put it in a tub”). In any event the distinctiveness of Cofresco's mark stemmed from bits of it that were different from those which rendered Reynolds' mark distinctive, so they consequently did not contribute to a likelihood of confusion. Cofresco appealed.

Mrs Justice Finlay-Geoghegan dismissed the appeal, but not before she rapped the hearing officer on the knuckles. She said (among other things):

* where goods are sold to the general public for domestic use, a judge can bring his or her own experience and common sense as a potential purchaser to bear in assessing the likelihood of deception and in determining the probable purchasing scenario of the goods in question in which the likelihood of deception must be determined.

* In this case no very careful or in-depth examination of the relevant trade marks would be made in the purchase of the goods concerned by consumers, who may not have both products before them at the time of making the purchase decision and with only an imperfect picture of the respective marks in his mind.

* the hearing officer was wrong to discount the likelihood of confusion by reason of his view that the average consumer would be likely to pay at least as much attention to functional considerations as he would to brand names in choosing plastic kitchen and household storage containers.

* While there was some aural similarity, the two marks were insufficiently similar to induce confusion. A contrary finding by the Rechtbank’s-Gravenhage (District Court of the Hague, The Netherlands) last year in a similar dispute might be explained by linguistic differences between Dutch and Irish English-speakers as well as by the fact that evidence of the earlier mark’s large degree of distinctiveness that was accepted before the Dutch court was not put before the court in Ireland.

The IPKat has been pondering over the learned judge's view that the hearing officer was wrong to say that the average consumer would be likely to pay at least as much attention to functional considerations as he would to brand names in choosing plastic kitchen and household storage containers. This is probably true with regard to word marks and logos, but can the same be said of trade marks consisting of product shapes or their containers or packaging, where the marks under comparison may have a functional element. Merpel says, if I were ordering these containers over the phone, I'm not sure I'd be so sure I could confidently tell TOPPITS from TUB-ITS. But then I'm just a fictional cat, not an average consumer.

Right: plastic containers and their friends as art - a lovely conception by Jessica Stockholder

Kats' chorus: why in Irish oppositions do opponents still persist in raising every ground of opposition known to man, when they only seriously argue one or two of them? Surely this contributes to global warming and should be stopped now.

Toppits you can eat here; Toppits you can't eat here
Tub-its here
Tebbits here