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Wednesday, 25 October 2006



The IPKat begs to inform you of a fresh Court of First Instance ruling on an appeal from Alicante on a Community trade mark issue. It's Case T-13/05 Castell del Remei v OHIM, Bodegas Roda (ODA). Indeed, this case is so fresh that our friends in Luxembourg haven't had time to translate it, so it's only in French and Spanish.

It looks as though Castell del Remei sought to register as a CTM the word ODA in Class 33, for alcoholic beverages other than beer. Roda opposed, alleging a likelihood of confusion with, and the taking unfair advantage of, various earlier Spanish registrations for wines and spirits, also in Class 33, containing the word RODA. At this point, however, the IPKat's rudimentary French begins to fail him. Can any kind reader please supply the result and - if it's interesting - the reasoning that underpins it?


Chris McLeod said...

It is a reasonably interesting decision. From a brief reading, there are a few points to note:

i) the appellant argued that the wines would not be confused because their labels would bear different denominations of origin - this was dismissed because the application covered all alcoholic beverages in class 33 and therefore covered goods of low quality which the average consumer would not deliberate over selecting.

ii) the CFI also held that the denominations of origin may in relation to wines eliminate any confusion but that they would not eliminate the likelihood that the relevant public might think that the goods came from the same or an economically linked entity.

iii) the appellant had argued that the respective marks were coexisting in use but had failed to provide any evidence of this - surely any argument of this nature will be rejected without any evidence.

iv) the appellant had also argued that the earlier mark RODA was inherently weak because of earlier marks including the element RODA; however, none of these was in class 33 so the argument was rejected.

Jeremy said...

Thanks so much for this, Chris - you've enlightened me no end.

Two small points:
(i) presumably denominations of origin will only eliminate the likelihood of confusion if consumers know what they mean. I don't think all wine consumers are terribly knowledgeable though;

(ii) on co-existence - Arnaud Folliard-Monguiral from OHIM has just written a really useful survey of Community court and Board of Appeal decisions on that very topic. Ultimately, you're right - evidence is key.

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