The General Court of the Court of Justice of the European Union ruled last Wednesday that there was no likelihood of confusion between the figurative signs featuring a rooster as the dominant element (Consorzio vino Chianti Classico v. OHIM, Case T-143/11, 5 December 2012). The General Court confirmed the key findings from OHIM’s Fourth Board of Appeal decision from January 2011. The parties in the proceedings before OHIM were the famous wine producer Consorzio vino Chianti Classico, the owner of a number of figurative trademarks containing the rooster in the middle of a circle, including these two:
and Fédération française de rugby (FFR), which sought to register with OHIM the following sign for alcoholic beverages (except beers) in Class 33 of the Nice Agreement concerning the International Classification of Goods and Services:
While affirming the decision of the Fourth Board of Appeal in relation to the likelihood of confusion, the General Court annulled the part of the Board’s decision in which the latter failed to examine whether the FFR sign diluted the Chiantitrademarks or took unfair advantage of their distinctive character or repute. Only nine paragraphs in the judgment are devoted to that aspect of the case, compared to 48 paragraphs analyzing the likelihood of confusion. The aspect concerning dilution and taking unfair advantage might be more intriguing, however, because it touches upon an issue to which an intuitive response is not obvious and the authoritative voices have spoken differently.
Confusion not likely
With regard to the confusion-prong of the case, the Court’s opinion began with an analysis of the relevant public. On that point, the Court corrected the Board of Appeal by determining that the public was made up of average consumers of wine, not solely in Italy and the United Kingdom, where the Chianti Classico marks were registered, but in Germany and France as well, because in the latter countries, according to Consorzio vino Chianti Classico, one of the Chianti marks was “well-known” and was thus protected against confusingly similar signs. This correction, while worth noting by those who have to identify relevant public in a trademark-related dispute, ultimately played no role in the adjudication of this particular case.
Consorzio vino Chianti Classico had, in its hands, two strong cards: enhanced distinctive character of its marks (due to the public’s association of the black rooster with Chianti Classico wines) and the fact that the goods at issue were identical – on the one hand Chianti wines, and on the other hand FFR’s “alcoholic beverages (except beers)”, which effectively encompass wines.
At the same time, the court found that the degree of similarity between the earlier and the applied-for marks was low:
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- Phonetically, the signs are clearly dissimilar, because the word elements (variations containing the words Chianti Classico, on the one hand, and the word FFR, on the other) have nothing in common. The importance of the phonetic difference in the specific case cannot be overstated, because “consumers of products in the wine sector usually describe and recognize wine by reference to the word element which serves to identify it, in particular in bars and restaurants where wines are ordered orally after their names have been seen on the wine list” (para. 44 of the judgment).
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- The signs share certain visual features, because they contain in their center the device of a rooster shown from the side and facing left. The roosters have a prominent crest and a very broad tail. On the other hand, the visual appearances of the word elements in the Chianti marks and the FFR sign clearly differ. Also, the shapes of the marks are different: the earlier marks have concentric circles, and the mark applied for is in the shape of a shield. Finally, the color of the roosters and other visual elements also differ.
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- Conceptually, the signs are not even able to be compared unless the consumer knows both the French and the Italian languages; from the perspective of such bilingual consumers the word aspects of the signs make the signs conceptually dissimilar. The designs of the marks also lead to the conclusion of difference, because the earlier marks are akin to a seal indicating the mark of a sovereign authority such as that of a state whereas the mark applied for resembles an armorial emblem, recalling a distinctive symbol associated with nobility or guilds (para. 48).
So is it likely that the general public in the four countries would believe that Chianti Classico wines and the FFR beverages come from the same undertaking or from economically-linked undertakings? It is not, the Court concluded. The extent of dissimilarities between the marks, and especially the importance of the difference between the word elements, outweigh the identity of the goods factor and the enhanced distinctiveness of Chianti’s rooster figure.
Dilution and taking unfair advantage – not as simple as it may seem
The Court annulled the decision of the Board of Appeal in so far as the Board rejected Chianti’s opposition based on Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark. According to the said provision,
the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
One would be tempted to conclude that the Board of Appeal was clearly correct when it dismissed the part of Chianti’s opposition relying on Article 8(5). The Board spent only one sentence on the matter: having concluded that the mark applied for and the earlier marks were neither identical nor similar, the Board held that Article 8(5) was inapplicable.
The matter is not that simple, admonished the Court. While it is true that similarity between the signs is too low to raise a likelihood of confusion, some similarity does exist (paras. 51 and 67 of the judgment); therefore, the Board of Appeal should have looked into the remaining conditions governing the applicability of Article 8(5). Implicit in the Court’s reasoning is the argument that, should the other preconditions have weighed heavily toward a finding of dilution (“being detrimental to the distinctive character of the earlier trade mark”) or a finding of taking unfair advantage, they might have offset the low similarity between the marks.
An observer is likely to remain unconvinced. Doesn’t Article 8(5) contain a condition which clearly is not satisfied in the case at bar – that the respective goods are notsimilar? Here, the goods (wines) are not only similar: they are identical. Isn’t Article 8(5) based on a premise that goods of the alleged infringer are non-competitive with the goods of the holder of the famous mark?
If one were to look for a guide in this matter in the best-known trademark law treatise, McCarthy on Trademarks and Unfair Competition (4th ed., 2011), the answer would be in the affirmative: “[T]o apply an anti-dilution law in a situation where the goods or services of the parties are competitive makes no sense” (§ 24.74 of the treatise). Frédéric Pollaud-Dulian, a leading French expert on trademark law, expressed a similar idea using slightly softer words, in La propriété industrielle (2011, at 1075).
However, even in the U.S. the Federal Trademark Dilution Act extends protection against dilution by blurring to competing (i.e. identical or similar) goods as well, and the most authoritative federal courts of appeals, including those for the 2nd, 7th, and 9th circuits, have ruled accordingly (for example, Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2nd Cir., 1999), at 222-23; Eli Lilly & Co. v. Natural Answers, Inc. 233 F.3d 456 (7th Cir., 2000), at. 466-68).
More importantly for the present case, the Court of Justice of the European Union has already taken a position that dilution by blurring and taking unfair advantage of the distinctive character or repute of an earlier mark may exist irrespective of whether the goods/services of the mark applied-for are similar to those of the earlier mark (see Sigla SA v. OHIM, Case T-215/03 (2007) (para. 33)). A recent example of the application of the rule is L’Oréal SA and Others v. Bellure NV and Others, Case C-487/07 (2009), in which the goods at issue were fragrance products (paras. 14-15, 47, and 50).
Serbian Trademark Act (2009) is in line with the liberal pronouncements of the CJEU, since it provides that dilutive use of a mark is prohibited “regardless of the goods and/or servicesconcerned” (Art. 5(1)). However, Methodology Applied by the Intellectual Property Office to the Procedure Relating to the Registration of Trade Marks departs from the law by limiting the protection against dilution to uses of “mutually substitutable trade marks on non-identical products” (Methodology, p. 38). The Methodology, of course, is not binding on the courts.
