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Friday, 12 October 2012

General Court latest: beer is definitely not tequila

It says TEQUILA MATADOR,
says Merpel, but isn't it a picture
of a Red Bull ...?
Most people have, or at least know of, a good story concerning their own or other people's adventures with tequila.  Now here is (well almost) the trade mark law equivalent: the ruling of the European Union's very own General Court in Mustafa Yilmaz v OHIM (Case T‑584/10), 3 October 2012.

The story started on 5 August 2004, when Tequila Cuervo, SA de CV filed a Community trade mark (CTM) application for the TEQUILA MATADOR HECHO EN MEXICO logo (No 003975117), depicted on the right.  Registration was sought in Class 33 for ‘alcoholic beverages, premixed alcoholic cocktails, tequila originating in Mexico and tequila liqueurs originating in Mexico’.  The CTM was accepted for registration and published on 8 August 2005.

On 8 November of the same year, Mustafa Yilmaz opposed the registration of the TEQUILA MATADOR HECHO EN MEXICO logo on the basis of his earlier international registrations of the word trade mark MATADOR in Class 32 for ‘Beers; mineral and aerated waters and other non‑alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.  Mr Yilmaz’s MATADOR trade marks were (i) a German registration (No 302050531) with effect from 21 August 2002; and (ii) an international registration (No 792051) with effect from 31 October 2002 designating the Benelux countries, the Czech Republic, Denmark, Estonia, Greece, Spain, France, Italy, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Slovenia, Slovakia, Finland, Sweden and the United Kingdom.  Mr Yilmaz based his opposition on relative grounds under Article 8(1)(b) of the CTM Regulation: given its identity with, or similarity to, the earlier MATADOR trade mark and the identity or similarity of the goods or services covered by the trade marks, there existed a likelihood of confusion on the part of the public in the territory in which his MATADOR trade mark was protected (the likelihood of confusion includes the likelihood of association with the earlier MATADOR trade mark).

In September 2009 the Opposition Division upheld Mr Yilmaz’s opposition.  Why? (i) the goods covered by the signs were similar because they were in competition with each other and (ii) the signs were similar overall.  A month later, Tequila Cuervo appealed and then, just in time for Christmas, amended its specification of goods to the following: ‘Tequila originating in Mexico, alcoholic cocktails containing tequila originating from Mexico, tequila liqueurs originating in Mexico’ falling within Class 33 -- the magic words ‘alcoholic beverages’ were thus removed.

In October 2010, the Second Board of Appeal of OHIM upheld Tequila Cuervo’s appeal by annulling the Opposition Division’s decision and allowing registration of the TEQUILA MATADOR HECHO EN MEXICO logo for ‘all the goods and services applied for’.  This was because
  •  the likelihood of confusion was to be examined first by comparing the TEQUILA MATADOR HECHO EN MEXICO logo with the earlier German MATADOR trade mark;
  •  the relevant public was composed of average consumers in Germany [this says a lot about the popularity of tequila in Germany, Merpel thinks];
  •  in accordance with the case-law of the General Court (MEZZOPANE and MONTEBELLO RHUM AGRICOLE), the alcoholic beverages covered by the TEQUILA MATADOR HECHO EN MEXICO logo were different to both the ‘beers’ and the ‘mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’ covered by the earlier German MATADOR trade mark, due to their nature, origin, ingredients, method of production, intended purpose, use, lack of substitutability and lack of complementarity, even if some of those goods were, to a certain extent, in competition with each other;
  •  the finding that there was no similarity between the goods at issue was also valid in all the Member States other than Germany in which the earlier international MATADOR trade marks were protected;
  •  there was no identity or similarity of the goods covered by the signs at issue, so that, even if those signs were found to be identical, there would be no likelihood of confusion.
However, in reaching this conclusion, the Board of Appeal failed to take account of Tequila Cuervo’s amendment to the list of goods.  OHIM later acknowledged responsibility for this error.  On appeal, Mr Yilmaz sought to annul the Board of Appeal's decision.  The General Court held that Mr Yilmaz’s appeal was regarded as being devoid of purpose in so far as it sought the annulment of the Board's ruling to the extent that it upheld the registration of the TEQUILA MATADOR HECHO EN MEXICO logo in respect of ‘alcoholic beverages’.

Does tequila really not quench thirst?
The IPKat vows to find out ...
Turning towards the remaining goods, the General Court agreed with the Board of Appeal and dismissed Mr Yilmaz’s appeal.  On the question of the comparison of the goods, the General Court stated that, while the goods belonged to the same general category of beverages, and more specifically to the category of alcoholic beverages, they were different owing to their ingredients, method of production, colour, smell and taste, with the result that the average consumer perceived them to be different in nature.  Those goods were not normally displayed on the same shelves in the areas of supermarkets and other outlets selling drinks.  As regards their use, a significant difference between the goods was that beer quenches thirst -- which is not normally the case for the alcoholic beverages covered by the TEQUILA MATADOR HECHO EN MEXICO logo.  The respective goods might be consumed in the same places and on the same occasions and satisfy the same need – for example, getting absolutely plastered, getting relatively plastered, enjoyment of a drink during a meal or as an aperitif – the fact remained that they did not belong to the same family of alcoholic beverages and that the consumer perceived them as two distinct products.  The General Court further noted that the existence of alcoholic cocktails which mix beer with other alcohol, in particular tequila, did not remove the differences between the goods since it was true of many drinks which were not similar.  Accordingly, a likelihood of confusion under Article 8(1)(b) could not be said to exist.

Things to do with tequila here
How to make your own tequila here
Tequila and health here
Tequila on YouTube here

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