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Thursday, 7 May 2009

Wine and glass "not complementary", says ECJ

The Court of Justice of the European Communities gave its decision today in Case C‑398/07 P, Waterford Wedgwood plc v Assembled Investments (Proprietary) Ltd, Office for Harmonisation in the Internal Market, a Community trade mark opposition which has been running for eight and a half years.

In December 1999, Assembled Investments applied to register the figurative sign on the right as a Community trade mark for "alcoholic beverages, namely wines produced in the Stellenbosch district, South Africa" (Class 33). Waterford opposed, citing its earlier Community word mark WATERFORD for 'articles of glassware, earthenware, chinaware and porcelain’ (Class 21).  The serious opposition was based on (i) likelihood of confusion under Article 8(1)(a)(b)  of Council Regulation 40/94 and taking of unfair advantage of its reputation without due cause under Article 8(5).

The Opposition Division rejected the opposition in its entirety: there was no likelihood of confusion since the goods were not similar (the fact that wine is generally drunk in a glass being insufficient in this respect) and the evidence provided by Waterford was insufficient to establish the repute of the trade mark on which the opposition was based.  Waterford succeeded however on appeal, where the Board of Appeal found that the trade mark applied for and the WATERFORD mark were highly similar on the visual, phonetic and conceptual levels for the relevant consumers in the United Kingdom and Ireland and that wine and articles of glassware were similar on account of the high degree to which they were complementary. Finding for Waterford under Article 8(1)(b), the Board of Appeal concluded that there was no need to rule on the Article 8(5) ground of opposition.


Assembled Investments appealed to the Court of First Instance, which overturned the Board of Appeal's decision. In the CFI's view, wine and glasses are distinct by their nature and their use, being neither in competition with one another nor substitutable, and not produced in the same areas. In the case of a wine glass and a bottle of wine being distributed together, the CFI found that this is normally perceived by the consumers concerned as a promotional attempt to increase sales of wine rather than as an indication that the producer concerned devotes part of his activity to the distribution of articles of glassware. Any complementarity was insufficiently pronounced for it to be accepted that, from the consumer’s point of view, the goods in question were similar within the terms of Article 8(1)(b).

Waterford then appealed to the Court of Justice, which today dismissed its appeal. Said that Court:
"... the Court of First Instance ... carried out a detailed assessment of the similarity of the goods in question on the basis of the factors [laid down by the Court of Justice]. ... it cannot be alleged that the Court of First Instance did not did not take into account the distinctiveness of the earlier trade mark when carrying out that assessment, since the strong reputation of that trade mark relied on by Waterford Wedgwood can only offset a low degree of similarity of goods for the purpose of assessing the likelihood of confusion, and cannot make up for the total absence of similarity. Since the Court of First Instance found ... that the goods in question were not similar, one of the conditions necessary in order to establish a likelihood of confusion was lacking ... and therefore, the Court of First Instance was right to hold that there was no such likelihood".
The IPKat is always anxious about cases in which complementarity of inherently dissimilar goods is argued, since what constitutes complementary goods (or services) is bound to differ as between economic sectors and cultural preferences.  Merpel says, this disposes of the Article 8(1)(b) point -- but whatever happened to the Article 8(5) opposition ground? Can anyone let us know?

Waterford crystal here and here
Glass recycling here
Stellenbosch here

2 comments:

Anonymous said...

You described the proceedings correctly: the Board of Appeal did not consider it necessary to rule on 8(5). Now since 8(1)(b) has been annulled, the case will be remitted to a Board to examine the second claim.

Personally, I am not convinced of the dissimilarity of these goods, nor about the way the CFI proceeded by adding its own knowledge without granting the right to be heard with the parties. In addition, there is an odd justification of the court for not examining the substance of the CFI case: there was not sufficient evidence for: the commercial importance of a practice whereby wine glasses and wine are marketed together. What would happen, if such evidence would be given now? Many types of wine have their special traditional glasses.

I can see that you will be unhappy about the length of the proceedings. But the problem is that it is unnecessary and impossible for an Opposition Division or a Board to examine all earlier rights and claims, if there is one that is successful. If the legislator foresaw four levels of control, this is the way it goes! And with this judgment the Court evidently has shown its firm intention to try to get rid of CTM appeal cases.

Guy said...

My local wine merchant, Taurus wines, sells not only a wide range of wines but also appropriate glasses to contain them. The CFI should visit Palmers Cross in Surrey.

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