LIMONCELLO DECISION NO GREAT SHAKES

The Court of First Instance posted its ruling this morning in Case T-7/04 Shaker di L. Laudato & C. Sas v OHIM, Limiñana y Botella, SL. Shaker applied to register the rather pretty label featured above as a Community trade mark for goods in Classes 29, 32 and 33. After the application was whittled down to take account of various office objections, Limiñana opposed it, citing its earlier Spanish registration of the word mark LIMONCHELO for goods in Class 33. The Opposition Division upheld the opposition, concluding that there was a likelihood of confusion and Shaker's appeal to the Board of Appeal was unsuccessful.

Shaker's appeal to the CFI however succeeded. That Court considered that the dominant element of Shaker's mark was not the word "Limoncello" but the pretty dish that decorated the middle of it. In the CFI's own words:

"65 The figurative representation of a round dish decorated with lemons is the dominant component of the mark claimed: it has nothing in common with the earlier trade mark, which is purely a word mark.

66 There is therefore no likelihood of confusion between the trade marks in question. The dominance of the figurative representation of a round dish decorated with lemons in comparison with the other components of the mark claimed prevents any likelihood of confusion arising from visual, phonetic or conceptual similarities between the words ‘limonchelo’ and ‘limoncello’ which appear in the marks at issue.

67 ... The fact that the average consumer retains only an imperfect mental image of the trade mark renders the dominant element of the mark in question of major importance ... Thus the dominant element of the trade mark claimed (the round dish decorated with lemons) is of major importance in the overall assessment of the sign because the consumer looking at a label for a strong alcoholic drink takes notice of, and remembers, the dominant element of the sign, which enables him to repeat the experience on the occasion of a subsequent purchase.

68 The dominance of the figurative component (a round dish decorated with lemons) in the mark claimed means that in this instance the assessment of the distinctive elements of the earlier trade mark does not affect the application of Article 8(1)(b) of Regulation No 40/94. Although the degree of distinctiveness of an earlier word mark may affect the assessment of the likelihood of confusion ..., that requires that there be, at the very least, some likelihood of confusion between the earlier trade mark and the mark claimed. However, it is clear from the overall assessment of the likelihood of confusion between the trade marks at issue that the dominance, in the case of the mark claimed, of a round dish decorated with lemons prevents there being any likelihood of confusion with the earlier trade mark. Consequently, there is no need to adjudicate on the distinctiveness of the earlier trade mark ...

69 In the light of those considerations, ... notwithstanding the fact that the goods concerned are identical, there is not a sufficiently high degree of similarity between the trade marks in question for a finding that the Spanish reference public might believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings. Accordingly, contrary to OHIM’s finding in the contested decision, there is no likelihood of confusion between them within the meaning of Article 8(1)(b) of Regulation No 40/94".

The IPKat agrees and hopes that this approach will be followed consistently by all the OHIM Boards and the CFI itself -- particularly where the earlier mark is the figurative mark containing a word, where it looks to the untrained observer as if the proprietor, by registering such a mark, effectively gets two trade marks for the price of one. Merpel says, why do so many oppositions seem to involve earlier Spanish registrations, or is it just a mirage?

Limoncello here and here
Make your own Limoncello here
Lemon Cello here