Background
The Italian company "Berebene S.r.l." applied for the following European Union trade mark "GHISU":
The association of wine producers united under the name "Chianti Classico" filed an opposition with the EUIPO based on the protection of of the following earlier Italian collective figurative mark "Chianti Classico", claiming reputation:
The opponent's sign, also known among wine connoisseurs as "Gallo Nero" (Black Rooster), also shows a rooster, which, however, is only recognisable as a black silhouette and looks to the left with an open beak.
The EUIPO upheld the opposition, against which the applicant appealed. The First Board of Appeal of EUIPO (BoA) found, due to 1) the reputation of the earlier mark (which was undisputed by the applicant), 2) the identical goods and 3) despite only medium to low similarity of the conflicting signs, that there was a likelihood that the mark applied for could take advantage of the reputation and market position of the earlier mark and held that there was infringement.
Proceedings before the General Court
Berebene S.r.l. challenged the BoA finding with an action before the European General Court. Although it did not dispute that the earlier mark had a high reputation, it argued that the Board of Appeal's assessment of the similarity of the signs was incorrect.
While Article 8(1)(b) of Regulation (EU) 207/2009 requires the existence of a likelihood of confusion, a lesser degree of similarity is sufficient for Article 8(5) of the Regulation, which is relevant here, provided that a comparative association between the signs is triggered in the relevant public.
The GC first clarified that the perception of the sign in conceptual terms did not depend on whether it was an individual or collective mark, neither on whether it protected white or red wine, as assumed by the applicant. In order to establish conceptual similarity, the GC considered that both the word element 'Chianti' of the earlier mark and the figurative element 'rooster' (Italian gallo = reference to the Gallura wine-growing region in Sardinia) of the mark applied for, convey a concept associated with the geographical origin of the wines designated by the marks at issue. However, in the mind of the relevant public, there is nevertheless a reference to the concept of a rooster because both signs contain such a representation, which brings about a conceptual similarity.
The GC also did not accept the applicant's objection that it was subject to the provisions of the controlled and guaranteed designation of origin (DOCG) "Vermentino di Gallura" and was therefore obliged to use the image of a rooster. The collective mark cited by the plaintiff was not the subject matter of the dispute and, in any case, it did not impose an obligation on the plaintiff to include the image of a rooster in its name. The GC countered the argument that the different position and size of the applied signs had not been sufficiently considered by stating that the specific use was not taken into account in the opposition proceedings as a registration procedure and that the forms of marketing could also change in the course of time.
According to the GC, in view of the visual and conceptual similarities between the marks, the Board of Appeal was right to conclude that there was an overall "medium to low" degree of similarity between the conflicting signs. However, this was sufficient in view of the further circumstances.
The goods were considered identical by the GC. In particular, no differentiation was to be made on the basis of the fact that the applicant used its sign exclusively for white wine, whereas the opponent used it only for red wine. The sign applied for was registered in general for the category of goods "alcoholic beverages with the exception of beer" and was not restricted to white wine. In the court's view, the reputation of the earlier mark did not extend only to red wines.
The inherent distinctive character and the reputation of the earlier trademark, is sufficient to qualify an infringement, according to the GC. The court adds that there is a sufficient risk that the relevant public will establish a connection between the trademarks, as the trademark applied for could ride on the coat-tails of the trademark with a reputation and benefit from its marketing draw and reputation (exploitation of reputation). In view of the identity of the goods and the reputation of the earlier mark, a medium to low degree of similarity between the signs is sufficient to establish infringement.
Comment
Finally, the court's statements on conceptual similarity should be emphasised. Such a conceptual similarity was assumed, irrespective of the differing word elements, solely because of the roosters depicted. Although such an approach has also been considered possible by case law so far, the findings here are remarkable because of the divergent word elements. On balance, this is a decision that is pleasing for the owners of well-known trademarks and further consolidates the case law of the GC on the protection of reputation.
Authored by Thorsten Klinger
